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 8-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11976768. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the elements currently claimed are included in one of the three independent claims of 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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1 and 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No 2005/0023002 to Zamora et al. (Zamora).
With regard to claim 1, Zamora discloses a system (Zamora, title, abstract) for reinforcement of a tubular structure (112, fig. 5, abstract) having a degraded section (the portion of tubular structure 112 having unwanted openings 114/114 as shown in fig. 5 and described in paragraph 0023), the system comprising:
a. a flexible sleeve (100, fig. 5, paragraph 0023) having a length between a first end and a second end (shown in fig. 5 the first and second ends being located on opposite sides of damaged section of 112 having unwanted perforations 114);
b. a flexible tube (216, fig. 8, paragraph 0040) having a length between a first end and a second end (shown in fig. 8), wherein the first end of the tube is coupled with the second end of the flexible sleeve (shown in fig. 8) such that an interior of the flexible sleeve may be accessed through the flexible tube (as described in paragraph 0042 wherein the sleeve is expanded by pumping fluid through the flexible tube 216); and
c. a curable fill (paragraph 0042 citing “curable resin” as the fluid pumped into sleeve to expand the sleeve within the tubular structure), configured to enter the flexible sleeve via the flexible tube (paragraph 0042) and cure within the flexible sleeve (paragraph 0042);
wherein the flexible tube is configured to support the flexible sleeve at a position within the tubular structure corresponding with the degraded section (as shown in fig. 5) until at least a portion of the fill cures and fixes the sleeve in place within the tubular structure (paragraph 0044).
With regard to claim 4, Zamora discloses the system of claim 1 as set forth above, wherein the sleeve is at least partially permeable (paragraph 0019 disclosing a braided sleeve with openings to receive the resin, making the braided sleeve permeable).
With regard to claim 5, Zamora discloses the system of claim 1 as set forth above, and further discloses wherein the sleeve comprises a non-permeable segment (paragraph 0042 disclosing a non-permeable layer provided to the permeable braided sleeve portion in a preferred embodiment).
With regard to claim 6, Zamora discloses the system of claim 5 as set forth above, and further discloses wherein the non-permeable segment has a length equal or greater than a length of the degraded section (shown in fig. 5).
With regard to claim 7, Zamora discloses the system of claim 1 as set forth above, and furth discloses wherein the first end of the flexible sleeve is closed (shown in fig. 5).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No 2005/0023002 to Zamora et al. (Zamora) in view of United States Patent Application Publication No. 2005/0028881 to Smith (Smith).
With regard to claims 2 and 3, Zamora fails to disclose wherein the sleeve comprises an inner layer and an outer layer and wherein the inner layer comprises a carbon fiber sleeve and the outer layer comprises a glass fiber sleeve.
Smith discloses the use of sleeves to repair a pipe (Smith, abstract), an analogous field of endeavor to Zamora.
Smith further discloses inner and outer layers (12/22, paragraphs 0051 and 0054) that are either carbon or glass fibers (paragraph 0058). It would have been obvious to one having ordinary skill in the art at the time of filing to provide the device of Zamora with a sleeve as taught by Smith having an inner carbon fiber layer and an outer glass fiber sleeve in order to test various configurations of the device of Zamora in the two layer arrangement of Smith in order to conduct quality control testing of the hose to determine suitability for its field of intended use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R DEAL whose telephone number is (469)295-9216. The examiner can normally be reached M-F generally 8-4 pm CST.
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 supervisors can be reached at: Craig M Schneider (571) 272-3607 and Ken Rinehart (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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/DAVID R DEAL/Primary Examiner
Art Unit 3753
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