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 .
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.
Claims 1-24 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,933,434.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the patented claims substantially encompasses the recitations of claims 1-24 of the instant application. Those recitations not explicitly encompassed by or recited in the patented claims are considered either inherent or obvious. The claims of the instant application, if allowed, would improperly extend the "right to exclude" already granted in the patent.
Claim Rejections - 35 USC § 102
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 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 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) 1-12, 14-22 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Werra (US 3,563,571).
As to claim 1, Werra discloses a clamp and gasket system, comprising: a clamp (31), the clamp comprising a first arm and a second arm (sections, Fig. 1, col. 2, ll. 43-45), the first arm and the second arm are pivotally connected together (as at 32, 33, 34), and the first arm including a slot (42); a gasket (20/22), the gasket comprising a tab portion (27), the tab portion including an opening (29); the tab portion configured to pass through the slot of the first arm (Fig. 1); and, a holding member (see annotated figure below) configured to engage with the opening of the tab portion.
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As to claim 2, Werra discloses the clamp and gasket system according to claim 1, wherein the gasket includes an inner diameter (defined by ring 20) and an outer diameter (defined by ring 22), where the tab portion extends outward from the outer diameter. Refer to Fig. 1.
As to claim 3, Werra discloses the clamp and gasket system according to claim 2, wherein the tab portion is integral with the outer diameter. Refer to Figs. 1 and 4.
It has been held that the term "integral" is sufficiently broad to embrace constructions united by such means as fastening and welding. In re Holte, 177 USPQ 326, 328 (CCPA 1973).
As to claim 4, Werra discloses the clamp and gasket system according to claim 2, wherein a seal surface of the gasket (one or more of surfaces 21, 23, 30) is generally between the inner diameter and the outer diameter.
As to claim 5, Werra discloses the clamp and gasket system according to claim 1, wherein the holding member is too large to pass through the slot. Refer to Figs. 1 and 2.
As to claim 6, Werra discloses the clamp and gasket system according to claim 1, wherein a combination of the holding member and the tab portion is too large to pass through the slot. Refer to Figs. 1 and 2.
As to claim 7, Werra discloses the clamp and gasket system according to claim 1, wherein the slot in the first arm is larger than the tab portion (in order for the tab to pass through). Refer to Fig. 1.
As to claim 8, Werra discloses the clamp and gasket system according to claim 1, wherein the slot passes from the inner surface of the first arm to the outer surface of the first arm. Refer to Fig. 1.
As to claim 9, Werra discloses the clamp and gasket system according to claim 1, wherein the slot completely passes through a width of the first arm. Refer to Fig. 1.
As to claim 10, Werra discloses the clamp and gasket system according to claim 1, wherein the slot is generally parallel to a length of the first arm. Refer to Fig. 1.
As to claim 11, Werra discloses the clamp and gasket system according to claim 1, wherein the clamp and gasket system is configured to form a unitary member. Refer to Fig. 1.
As to claim 12, Werra discloses the clamp and gasket system according to claim 1, wherein the holding member is a bolt and nut combination, a d-ring, a carabiner, a lock, or other mechanical structure that includes a portion that passes through the opening in the tab portion. Refer to Fig. 1.
As to claim 14, Werra discloses the clamp and gasket system according to claim 1, wherein the clamp is configured to move between an open position and a closed position, wherein in the open position, the holding member holds the gasket to the first arm. Refer to Fig. 1 and col. 2, ll. 43-55.
As to claim 15, Werra discloses the clamp and gasket system according to claim 1, wherein the clamp is configured to move between an open position and a closed position, wherein in the open position, the holding member holds the gasket to the first arm, and, wherein in the open position, the holding member is configured to engage and disengage from the opening. Refer to Fig. 1 and col. 2, ll. 43-55.
As to claim 16, Werra discloses the clamp and gasket system according to claim 1, wherein the clamp is configured to move between an open position and a closed position, wherein in the open position, the holding member holds the gasket to the first arm until the holding member is disengaged from the opening. Refer to Fig. 1 and col. 2, ll. 43-55.
As to claim 17, Werra discloses the clamp and gasket system according to claim 1, wherein a length of the slot is aligned with a length of the first arm, and the length of the slot is greater than both a depth and a width of the slot. Refer to Fig. 1.
As to claim 18, Werra discloses a clamp and gasket system, comprising: a clamp (31), the clamp comprising a first arm and a second arm (sections, Fig. 1, col. 2, ll. 43-45), the first arm and the second arm are pivotally connected together (as at 32, 33, 34), and the first arm including a slot or opening (42); the clamp configured to move between an open position and a closed position (Fig. 1 and col. 2, ll. 43-55); a gasket (20, 22), the gasket comprising a tab portion (27), the tab portion including an opening (29); the tab portion configured to pass through the slot or opening of the first arm (Fig. 1); and, a holding member (see annotated figure below) configured to engage with the opening of the tab portion, wherein the holding member holds the gasket to the first arm (Fig. 1).
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As to claim 19, Werra discloses the clamp and gasket system according to claim 18, wherein, in the open position, the holding members holds the gasket to the first arm. Refer to Fig. 1 and col. 2, ll. 43-55.
As to claim 20, Werra discloses a method of clamping together sanitary tubes (10, 11), comprising: providing an end of a first sanitary tube (10) and an end of a second sanitary tube (11); providing a clamp and gasket system, comprising: a clamp (31), the clamp comprising a first arm and a second arm (sections, Fig. 1, col. 2, ll. 43-45), the first arm and the second arm are pivotally connected together (as at 32, 33, 34), and the first arm including a slot; a gasket (20/22), the gasket comprising a tab portion (27), the tab portion including an opening (29); the tab portion configured to pass through the slot of the first arm (Fig. 1); and a holding member (see annotated figure below) configured to engage with the opening; positioning the gasket between the ends of the first sanitary tube and the second sanitary tube (Figs. 1 and 3); inserting the tab portion through the slot (Fig. 1, col. 2, ll. 55-56); closing the clamp; and, engaging the holding member to the opening of the tab portion (col. 2, ll. 42-65).
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As to claim 21, Werra discloses a clamp and gasket system to seal ends of sanitary tubing, comprising: a gasket (20/22), the gasket comprising a seal surface (one or more of surfaces 21, 23, 30) positioned between an inner diameter and an outer diameter of the gasket, the seal surface includes a first seal surface (21) having a first convex portion and a second seal surface (21) having a second convex portion on opposite sides of the gasket (Fig. 3); a clamp (31), the clamp comprising a first arm and a second arm (sections, Fig. 1, col. 2, ll. 43-45), the first arm and the second arm are pivotally connected together (as at 32, 33, 34); an end of the first sanitary tube includes a first concave portion (15); an end of the second sanitary tube includes a second concave portion (19); and, the clamp holds the end of the first sanitary tube together with the end of the second sanitary tube in a sealing engagement with the gasket (Fig. 1), wherein the first concave portion seals against the first convex portion and the second concave portion seals against the second convex portion (Figs. 2 and 3).
As to claim 22, Werra discloses the clamp and gasket system to seal ends of sanitary tubing according to claim 21, wherein the first concave portion includes a first inner radius and a first outer radius, and tangents of the first inner radius and the first outer radius seal against the first convex portion, and the second concave portion include includes a second inner radius and a second outer radius, and tangents of the second inner radius and the second outer radius seal against the second convex portion. Refer to Figs. 1-3.
As to claim 24, Werra discloses the clamp and gasket system to seal ends of sanitary tubing according to claim 21, wherein the end of the first sanitary tube (as at 13) is generally perpendicular to a length of the first sanitary tube (Fig. 3), wherein the end of the first sanitary includes the first concave portion between a generally flat inner surface and a generally flat outer surface (as at 14 and 23, Fig. 3), wherein the end of the second sanitary tube (as at 19) is generally perpendicular to a length of the second sanitary tube (Fig. 3), wherein the end of the second sanitary tube includes the second concave portion between a generally flat inner surface and a generally flat outer surface (as at 14 and 23, Fig. 3), wherein in the sealing engagement, the generally flat inner surfaces and the generally flat outer surfaces do not touch a flat surface of the inner diameter of the gasket or a flat surface of the outer diameter of the gasket (Fig. 3).
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 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 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.
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Werra in view of Smith (US 4,002,344)
As to claim 13, Werra discloses the clamp and gasket system according to claim 1, except that the tab portion includes a tag area with markings, writing, or other indicia.
However, Smith teaches a flanged pipe gasket having identifying-type indicia thereon (refer to Fig. 5). Smith therefore, provides a general teaching of providing indicia on a pipe gasket similar to Werra, in order to provide operational information related to the pipe joint.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the tab portion of Werra’s gasket assembly to include markings, writing, or other indicia, as taught by Smith, with a reasonable expectation of success, in order to provide operational information related to the pipe joint.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Werra, alone.
As to claim 23, Werra discloses the clamp and gasket system to seal ends of sanitary tubing according to claim 21, except that the gasket is wholly or nearly completely made from 304 stainless steel or other stainless steel alloys.
Stainless steel is a well-known and commercially available material that is known for its aesthetic appeal, corrosion-resistance, durablity, recyclability, and sanitariness. As such, it would have been an obvious matter of engineering design choice to one of ordinary skill in the art to have selected 304 stainless steel or other stainless steel alloys as the material for the Werra gasket, for such reasons as aesthetic appeal and its desirable physical properties such as corrosion-resistance, durablity, recyclability, and sanitariness. Moreover, it should be noted that it has been consistently held by case law that the selection of a known material for the reasons that it is known and on the basis of its suitability for the intended use is within the expected level of skill of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960).
Examiner’s Note:
The italicized portions in the foregoing claims are functional recitations. These clauses, as well as other statements of intended use do not serve to patently distinguish the claimed structure over that of the reference(s), as long as the structure of the cited reference(s) is capable of performing the intended use. See MPEP 2111-2115.
See also MPEP 2114, which states:
A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647;
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531; and
[A]pparatus claims cover what a device is, not what a device does." Hewlett Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525,1528.
Any one of the systems in the cited reference(s) is capable of being used in the same manner and for the intended or desired use as the claimed invention. Note that it is sufficient to show that said capability exists, which is the case for the cited reference(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Swisher discloses a retention ring having a seal (39) secured to a holding member, as shown in Fig. 8. Westhoff et al discloses a gasket package having an installation tag with indicia thereon secured to the gasket.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James M Hewitt II whose telephone number is (571)272-7084. The examiner can normally be reached M-F 9-930pm, mid-day flex 2-4pm.
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James M. Hewitt II
Primary Examiner
Art Unit 3679
/JAMES M HEWITT II/Primary Examiner, Art Unit 3679