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 .
Response to Amendment
The Preliminary Amendment filed November 15, 2023 has been entered and considered with the Office Action below.
Claims 15-20 have been added.
Drawings
The drawings are objected to because the figures are considered generally informal with uneven and unclear lines making up the figures; for example, the liner arrangement in Figures 2-6 is difficult to see and the features thereof differentiate from the rest of the figure. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 60. 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. 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.
Claim Objections
Claims 1, 4, 10, 18, and 19 objected to because of the following informalities:
In line 6 of claim 1, the comma after the second occurrence of “part” should be removed.
In lines 2 and 3 of claim 4, the quotation marks around “at least a fraction” should be removed.
In line 2 of claim 4, the comma after “for or more” should be removed.
In line 4 of claim 4, the comma after “deflation function” should be removed.
In line 2 of claim 10, the quotation marks should be removed from around “for inserting” and “for installing”.
In line 3 of claim 10, “the said” should be changed to --the-- or --said--.
In lines 1 and 3 of claim 18, the quotation marks around “at least a fraction” should be removed.
In lines 1 and 3 of claim 19, the quotation marks around “at least a fraction” should be removed.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” and thus are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means for deflation and inflation” and “fastening means” in claim 1 and “fluid injection means” and “fluid withdrawing means” in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “sealing arrangement” in claims 6 and 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 4-6, 10-13, and 18-20 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 4: There is insufficient antecedent basis for “the deflation function” in line 4.
Regarding claim 5: There is insufficient antecedent basis for “the leading end” in line 4.
Regarding claims 6 and 10: Claim element “sealing arrangement” is a means (or step) plus function limitation that invokes 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function.
Applicant is required to:
(a) Amend the claim so that the claim limitation will no longer be a means (or step) plus function limitation under 35 U.S.C. 112, sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant is required to clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 10: There is insufficient antecedent basis for “the for inserting” in line 2.
Regarding claim 10: The phrase “wherein the ‘for inserting’ further also comprises ‘for installing’ in a pipe structure” is considered generally confusing. What is “for inserting” and “for installing” referring to? Correction and clarification are required.
Regarding claim 11: The phrase “the above mentioned ability” is considered generally confusing as it is unclear if it is referring to any mention in claims 1-10 or just a mention in claim 1. It is suggested that the “above mentioned” portion of the phrase is not needed.
Regarding claim 12: As claim 1 requires “an inserting hose”, it is unclear if the “inserting hose” of claim 12 is the same hose as that recited in claim 1 or a separate feature. For the purposes of examination, the hose of claim 1 and claim 12 are being treated as the same element.
Regarding claim 13: Claim 13 requires that “the inserting tool [be] integrated with the inserting hose” however claim 1 indicates that the inserting hose is part of the inserting tool. It is unclear how the tool can be integrated with an element that is part of the tool itself.
Regarding claims 18 and 19: There is insufficient antecedent basis for “the deflation function” in line 3.
Regarding claim 20: There is insufficient antecedent basis for “the leading end” in line 3.
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.
Claim(s) 1-5, 7-9, and 11-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nilsson et al. (US 2012/021114, Nilsson).
Regarding claims 1 and 14: Nilsson discloses a liner arrangement Fig 5 for inserting in a pipe structure 120 – Fig 8, wherein the liner arrangement comprises at least one liner part 110, an inserting tool 1 comprising an inserting hose 2 and means for deflation and inflation 3, 25 – [0027], [0047], [0072], [0077], [0078], and fastening means 116, wherein the at least one liner part has a length and is adapted to cooperate with the means for deflation and inflation Fig 6, wherein a partitioning of said at least one liner part encloses a part, of said inserting hose Fig 6, and said partitioning has a length Fig 5, 6, wherein at least a fraction of the enclosing partitioning, together with the fastening means, enable fastening of the at least one liner part to said inserting hose Fig 6 during insertion of the liner arrangement in a pipe structure 120 – Fig 8, and wherein, while the at least one liner part is fastened to said inserting hose, and during said insertion, the liner arrangement has ability to bend and thereby demonstrating a minimum outside bend radius not greater than about the smallest inside bend radius of said pipe structure Fig 8, [0009], [0044], [0045], [0064], [0092], [0099].
Regarding claim 2: Wherein the at least one liner part, during said insertion, cooperates with the means for deflation and inflation, and thereby the at least one liner part obtains an inflated state Abstract, [0002].
Regarding claims 3 and 17: Wherein the liner arrangement has ability to bend and thereby demonstrating a minimum outside bend radius not greater than about 97 % of the smallest inside bend radius of said pipe structure Fig 8, [0009], [0044], [0045], [0064], [0092], [0099].
Regarding claims 4, 18, and 19: Wherein said at least a fraction comprises one, two, three, four or more fractions of the enclosing partitioning Fig 6, 8, and wherein the at least a fraction, the fastening means, and the deflation function, of the means for deflation and inflation, together enable fastening of the at least one liner part to said inserting hose during insertion of the liner arrangement in a pipe structure Fig 6, 8.
Regarding claims 5 and 20: Wherein the liner arrangement has ability to bend and ability to demonstrate said minimum outside bend radius, over, at least, a main stretch of the liner arrangement, wherein the main stretch stretches from the leading end of the liner arrangement over, and past, the length of the at least one liner part, to an area on the inserting hose Fig 8, [0009], [0044], [0045], [0064], [0092], [0099].
Regarding claim 7: Wherein the means for deflation and inflation comprises fluid injecting means [0047]; fluid withdrawing means [0027], [0096]; and a deflatable and inflatable bladder, and/or said at least one liner part also functioning itself as a deflatable and inflatable bladder Abstract.
Regarding claim 8: Wherein the fastening means comprises at least one of glue, tape [0087], and clamps [0087].
Regarding claim 9: Wherein the liner arrangement further comprises a tow rope 5.
Regarding claim 11: Wherein the liner arrangement has the ability to bend along a length which is greater than the distance between an intended position for the liner part along the pipe structure and a position upstream of the location of said smallest inside bend radius of said pipe structure Fig 8, [0009], [0044], [0045], [0064], [0092], [0099].
Regarding claim 12: Wherein the liner arrangement comprises an inserting hose 2 which is free from rigid and non-flexible elements along said length Fig 1.
Regarding claim 13: Wherein the inserting tool is integrated with the inserting hose Fig 1.
Regarding claim 14: Nilsson discloses a method for relining a pipe structure-Abstract involving:
providing the above described liner arrangement Fig 5,
inserting said liner arrangement into the interior of the pipe structure fig 6, 7, wherein said liner arrangement, together with said liner arrangement's its fastening means, has an outer diameter that is smaller than the inner diameter of said pipe structure Fig 6, 7,
locating the at least one liner part at a desired position in the pipe structure Fig 6, 7,
inflating with the inflating function, of the means for deflation and inflation, wherein the means for deflation and inflation cooperates with the at least one liner part-such that the at least one liner part conforms to the interior shape of the pipe structure Abstract, [0002], [0027], [0047], [0072], [0077], [0078], and
sealing the liner arrangement against the interior of the pipe structure by curing – [0040]-[0044], [0046], [0047], [0095],
wherein said method comprises:
that during said insertion, the liner arrangement has ability to bend and thereby demonstrating a minimum outside bend radius not greater than about the smallest inside bend radius of said pipe structure Fig 8, [0009], [0044], [0045], [0064], [0092], [0099].
Regarding claim 15: Wherein the area on the inserting hose is in proximity to the at least one liner part Fig 6.
Regarding claim 16: Wherein the fluid injected by the fluid injecting means is one of hot oil, hot water, and hot gas [0047], and wherein the fluid withdrawing means is a source for providing vacuum [0027], [0096].
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(s) 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nilsson in view of Wood et al. (US 6,146,491).
Regarding claim 6: Wherein the at least one liner part comprises a curable composition [0040]-[0044], [0046], [0047], [0095].
Nilsson discloses all of the limitations of the above claim(s) except the liner arrangement further comprises a sealing arrangement extending along the circumference of the at least one liner part, and the scaling arrangement is pre-mounted on at least one end section of the least one liner part before inserting the liner arrangement in said pipe structure.
Wood discloses a liner arrangement similar to that of Nilsson. The liner arrangement includes a liner part 110 around which seals 29 – Fig 6 or 32 – Fig 2, 8 extend so that the seals are located on an end section of the liner part when inserted in a pipe structure 3:42-60, 6:5-10.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Nilsson to include a sealing arrangement extending along the circumference of the at least one liner part, and the scaling arrangement is pre-mounted on at least one end section of the least one liner part before inserting the liner arrangement in said pipe structure, as taught by Wood, in order to have been able to seal against the pipe structure and prevent debris from entering the interface between the liner and pipe structure 3:42-60.
Regarding claim 10: Wherein the "for inserting" further also comprises "for installing" in a pipe structure Fig 8, wherein the said at least one liner part is adapted to be curable[0040]-[0044], [0046], [0047], [0095].
Nilsson discloses all of the limitations of the above claim(s) except the liner arrangement further comprises a sealing arrangement.
Wood discloses a liner arrangement similar to that of Nilsson. The liner arrangement includes a liner part 110 around which seals 29 – Fig 6 or 32 – Fig 2, 8 extend so that the seals are located on an end section of the liner part when inserted in a pipe structure 3:42-60, 6:5-10.
It would have been considered obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Nilsson so that the liner arrangement included a sealing arrangement, as taught by Wood, in order to have been able to seal against the pipe structure and prevent debris from entering the interface between the liner and pipe structure 3:42-60.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER H GAY whose telephone number is (571)272-7029. The examiner can normally be reached Monday through Thursday, 6-3:30 and every other Friday 6-11.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Y Coupe can be reached at (571)270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER H GAY/Primary Examiner, Art Unit 3619
JHG
2/11/2026