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 .
Election/Restrictions
Claim 15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 July 2026.
Drawings
The drawings were received on 12/5/2023. These drawings are acceptable.
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.
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Claims 1-7 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7, respectively, of U.S. Patent No. 11835169 to Jones et. al.
Regarding claim 1, Jones et. al. recites in claim 1: An insulation system, comprising: an insulation member having an inner surface and an outer surface; and a protective cladding having an interior surface and an exterior surface, wherein: the interior surface of the protective cladding is disposed about the outer surface of the insulation member; the interior surface of the protective cladding comprises an embossed texture formed from a plurality of protruding features and a plurality of recessed features (Col. 11, lines 36-47); and the plurality of protruding features extend beyond the plurality of recessed features (iterates a plurality of protruding features extending least 1 mm instead of 0.02 mm [Col. 11, lines 48-49]).
While claim 1 does not describe the plurality of protruding features extending at least 0.2 mm beyond the plurality of recessed features, it does however declare the measurement to be at least 1 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reduce the extended feature to at least 0.2 mm from at least 1 mm in order to test different dimensions for quality control purposes, since it has been held that discovering an optimum value or workable ranges of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 2, Jones et. al. recites in claim 2: The insulation system of claim 1, wherein: the interior surface of the protective cladding is positioned directly against the outer surface of the insulation member (Col. 11, lines 50-53).
Regarding claim 3, Jones et. al. recites in claim 3: The insulation system of claim 1, wherein: at least a % of the interior surface of the protective cladding comprises the plurality of recessed features (plurality of recessed features comprises at least 40% of the interior surface of the protective cladding [Col. 11, lines 54-56]).
While claim 3 does not describe the plurality of recessed features to be at least 20% of the interior surface, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reduce the percent coverage to at least 20% from at least 40% in order to test different coverage for quality control purposes, since it has been held that discovering an optimum value or workable ranges of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 4, Jones et. al. recites in claim 4: The insulation system of claim 1, wherein: the exterior surface of the protective cladding forms an outermost surface of the insulation system (Col. 11, lines 57-59).
Regarding claim 5, Jones et. al. recites in claim 5: The insulation system of claim 1, wherein: the inner surface of the insulation member is disposed about an outer surface of a piece of equipment (Col. 11, lines 60-62).
Regarding claim 6, Jones et. al. recites in claim 6: The insulation system of claim 1, wherein: the embossed texture permits cross-direction flow of liquid (Col. 11, lines 63-65).
Regarding claim 7, Jones et. al. recites in claim 7: The insulation system of claim 1, wherein: the protective cladding comprises a drainage port (Col. 11, lines 66-67).
Claim 16-17 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15-16, respectively, of U.S. Patent No. 11835169 to Jones et. al.
Regarding claim 16, Jones et. al. recites in claim 15: A method of insulating a piece of equipment, comprising: positioning an inner surface of an insulation member against an outer surface of a piece of equipment; positioning an interior surface of a protective cladding against an outer surface of the insulation member, wherein: the interior surface of the protective cladding comprises an embossed texture formed from a plurality of protruding features and a plurality of recessed features (Col. 12, lines 35-44); and the plurality of protruding features extend beyond the plurality of recessed features (iterates a plurality of protruding features extending least 1 mm instead of 0.02 mm [Col. 12, lines 45-46]); and securing ends of the protective cladding together (Col. 12, line 47).
While claim 15 does not describe the plurality of protruding features extending at least 0.2 mm beyond the plurality of recessed features, it does however declare the measurement to be at least 1 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reduce the extended feature to at least 0.2 mm from at least 1 mm in order to test different dimensions for quality control purposes, since it has been held that discovering an optimum value or workable ranges of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 17, Jones et. al. recites in claim 16: The method of insulating a piece of equipment of claim 16, further comprising: forming a drainage port in a low region of the protective cladding (Col. 12, lines 48-51).
Claim 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11835169 to Jones et. al.
Regarding claim 19, Jones et. al. recites in claim 19: The method of insulating a piece of equipment of claim 16, wherein: the embossed texture permits cross-direction flow of liquid (Col. 12, 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8-9, 11-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kress (US 20230093106).
Regarding claim 1, Kress teaches: An insulation system, comprising: an insulation member having an inner surface and an outer surface (Insulation member 3 having an inner surface and outer surface [Fig. 1b and Para. 21]); and a protective cladding having an interior surface and an exterior surface (protective cladding 2 having interior surface and exterior surface [Fig. 1B and Para. 21]), wherein: the interior surface of the protective cladding is disposed about the outer surface of the insulation member (protective cladding 2 is disposed about the outer surface of the insulation member [Fig. 1B]); the interior surface of the protective cladding comprises an embossed texture formed from a plurality of protruding features and a plurality of recessed features (Interior surface of protective cladding 2 comprised protruding and recessed features [Figs. 3 and 7]); and the plurality of protruding features extend at least 0.02 mm beyond the plurality of recessed features (protruding features from 1.2 mm to 62.5 mm [Fig. 3 and page 3 bottom table]).
Regarding claim 2, Kress teaches: The insulation system of claim 1, wherein: the interior surface of the protective cladding is positioned directly against the outer surface of the insulation member (protective cladding 2 is position against the outer surface of the insulation member [Fig. 7]).
Regarding claim 3, Kress teaches: The insulation system of claim 1, wherein: at least 20% of the interior surface of the protective cladding comprises the plurality of recessed features (protective cladding 2 comprises corrugation along entirety of the interior surface [Figs. 1A and 1D]).
Regarding claim 4, Kress teaches: The insulation system of claim 1, wherein: the exterior surface of the protective cladding forms an outermost surface of the insulation system (exterior surface of the protective cladding 2 forms an outermost surface [Fig. 1B]).
Regarding claim 5, Kress teaches: The insulation system of claim 1, wherein: the inner surface of the insulation member is disposed about an outer surface of a piece of equipment (inner surface of insulation member 3 disposed about outer surface of pipe 4 [Fig. 1B]).
Regarding claim 8, Kress teaches: The insulation system of claim 1, wherein: the plurality of protruding features extend radially inward toward the outer surface of the insulation member (plurality of features extend inward toward outer surface of insulation member 3 [Fig. 7]).
Regarding claim 9, Kress teaches: A protective cladding, comprising: a cladding body having an interior surface and an exterior surface (protective cladding 2 having interior surface and exterior surface [Fig. 1B and Para. 21]), wherein: the interior surface of the cladding body comprises an embossed texture formed from a plurality of protruding features and a plurality of recessed features (Interior surface of protective cladding 2 comprised protruding and recessed features [Figs. 3 and 7]); at least 20% of the interior surface of the protective cladding comprises the plurality of recessed features (protective cladding 2 comprises corrugation along entirety of the interior surface [Figs. 1A and 1D]).; the plurality of protruding features extend at least 0.02 mm beyond the plurality of recessed features (protruding features from 1.2 mm to 62.5 mm [Fig. 3 and Table 4]). ; and the plurality of recessed features are interconnected (features are interconnected via the cladding body 2 [Fig. 7]).
Regarding claim 11, Kress teaches: The protective cladding of claim 9, wherein: each of the plurality of protruding features has a same height; and each of the plurality of recessed features has a same depth (Protruding and recessed features have same depth and height [Fig. 3]).
Regarding claim 12, Kress teaches: The protective cladding of claim 9, wherein: the plurality of protruding features and the plurality of recessed features are arranged in a uniform repeating pattern (Features are repeating and uniform [Fig. 3 and 7]).
Claims 9-12, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baldwin et. al. (US 20210170713).
Regarding claim 9, Baldwin et. al. teaches: A protective cladding, comprising: a cladding body having an interior surface and an exterior surface (protective cladding 70 having interior surface and exterior surface [Fig. 4]), wherein: the interior surface of the cladding body comprises an embossed texture formed from a plurality of protruding features and a plurality of recessed features (Interior surface of protective cladding 70/15 comprised protruding and recessed features [Figs. 1A and 4]); at least 20% of the interior surface of the protective cladding comprises the plurality of recessed features (protective cladding 70/15 comprises the embossed features along entirety of the interior surface [Figs. 1A and 4]).; the plurality of protruding features extend at least 0.02 mm beyond the plurality of recessed features (height of roughly 0.3-1.3 mm [Para. 20, lines 1-6]); and the plurality of recessed features are interconnected (features are interconnected via the cladding body 15 [Fig. 1A]).
Regarding claim 10, Baldwin et. al. teaches: The protective cladding of claim 9, wherein: the plurality of protruding features comprise diamond shapes and the plurality of recesses comprise an interconnected woven pattern that extends about the diamond shapes (teaches recesses woven about protruding features comprised of diamond shapes [Fig. 2D]).
Regarding claim 11, Baldwin et. al. teaches: The protective cladding of claim 9, wherein: each of the plurality of protruding features has a same height; and each of the plurality of recessed features has a same depth (Protruding and recessed features have same depth and height [Fig. 4]).
Regarding claim 12, Baldwin et. al. teaches: The protective cladding of claim 9, wherein: the plurality of protruding features and the plurality of recessed features are arranged in a uniform repeating pattern (Features are repeating and uniform [Figs. 2A-2E]).
Regarding claim 14, Baldwin et. al. teaches: The protective cladding of claim 9, wherein: the interior surface of the protective cladding comprises a material that improves the flow of water against the interior surface (teaches embossed structure to flow water for drainage [Para. 20, lines 14-20]).
Claims 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oeschger (US 20110308659).
Regarding claim 16, Oeschger teaches: A method of insulating a piece of equipment, comprising: positioning an inner surface of an insulation member against an outer surface of a piece of equipment; positioning an interior surface of a protective cladding against an outer surface of the insulation member, wherein: the interior surface of the protective cladding comprises an embossed texture formed from a plurality of protruding features and a plurality of recessed features (method comprises an inner pipe 2 enclosed by a foam layer 15 and then enclosed by an outer protective cladding/outer shell 13 which is formed with protrusions 26 [Claim 1]); and the plurality of protruding features extend at least 0.02 mm beyond the plurality of recessed features (features are protruded at 4 mm or more [Para. 25, lines 11-16]); and securing ends of the protective cladding together (utilizing glue to secure the outer shell cladding 13 [Para. 18, lines 5-10]).
Regarding claim 20, Oeschger teaches: The method of insulating a piece of equipment of claim 16, wherein: the interior surface of the protective cladding comprises a moisture barrier (the system comprises a moisture barrier/foil 5 disposed about the insulation member and glued to interior surface of protective cladding/outer shell 13 [Para. 15, lines 1-7]).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kress (US 20230093106) in view of Baldwin et. al. (US 20210170713).
Kress teaches the insulation system of claim 1 but fails to teach embossed texture permitting cross-directional flow of liquid.
Baldwin et. al. teaches: the embossed texture permits cross-direction flow of liquid (teaches embossed structure to flow water for drainage [Para. 20, lines 14-20] and embossed structure comprises diamond shape which would permit cross-direction flow of liquid [Fig. 2D and Para. 5, lines 10-12]).
It would have been obvious to someone skilled in the art before the effective filing date of the claimed invention to combine the teachings of Kress with the embossed texture of Baldwin et. al. in order to better facilitate drainage of liquid built up through a piece of equipment which is supported by the embossed texture of the cladding body (Para. 16, lines 9-13).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Oeschger (US 20110308659) in view of Baldwin et. al. (US 20210170713).
Oeschger teaches the method of insulating a piece of equipment of claim 16 but fails to teach embossed texture permitting cross-directional flow of liquid.
Baldwin et. al. teaches: the embossed texture permits cross-direction flow of liquid (teaches embossed structure to flow water for drainage [Para. 20, lines 14-20] and embossed structure comprises diamond shape which would permit cross-direction flow of liquid [Fig. 2D and Para. 5, lines 10-12]).
It would have been obvious to someone skilled in the art before the effective filing date of the claimed invention to combine the teachings of Oeschger with the embossed texture of Baldwin et. al. in order to produce insulation of a piece of equipment by including structure to facilitate drainage of liquid built up through a piece of equipment which supported by the embossed texture of the cladding body (Para. 16, lines 9-13).
Allowable Subject Matter
Claims 7, 13, and 17-18 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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:
The prior art of record does not disclose or reasonably suggest the control bar lock having a combination of features set forth in the dependent claims above.
US 20230093106 to Kress, US 20210170713 to Baldwin et. al., and US 20110308659 to Oeschger may been seen as close prior art in certain aspects but fails to expressly teach: the protective cladding comprising a drainage port as described in claims 7 and 17, the cladding comprising a high-friction coating as described in claim 13, and the protective cladding comprising different surface finishes for the interior and exterior surfaces as described in claim 18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Juuti (US 20100170590) teaches: a manufacturing method of an insulated member with an exterior sheath comprising an embossed structure (abstract and Fig. 2)
Bronnum et. al. (US 20150375433) teaches: a method for manufacturing an insulated pipe with a corrugated outer protective casing (abstract)
Sennik (US 20220136641) teaches: an insulated pipeline comprising an embossed membrane (Para. 5 and 39)
Chilers (US 2936259) teaches: a weather-proof jacketing for insulation around a pipeline comprising clamps to lock in the jacketing (Fig. 1)
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/JOSHUA D LEARY/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
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