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 .
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 10-18 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 10, the claim recites “a probe with a wave measurement device therein, wherein each probe is configured for insertion into an area corresponding to a location of a service line;”, however only one probe has been claimed. Therefore the claim has been rendered indefinite. Examiner suggest properly introducing multiple probes.
Regarding claim 10, the claim recites “a probe with a wave measurement device therein,” and then further recites “a wave measurement device that detects at least two substrate waves created by the service line wave passing through the service line and into a substrate;”, however since a “wave measurement device” has already been introduced being included with the probe it is unclear if the claim is later referring to a new distinct wave measurement device or the already introduced wave measurement device. Therefore the claim has been rendered indefinite.
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 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sjoblom et al US20170254782 (hereinafter “Sjoblom”).
Regarding claim 1, Sjoblom discloses a nondestructive evaluation method (abstract) for determining a material used in a below ground service line (Service line 220, abstract) comprising:
inserting a probe (probes-200 ) with a wave measurement device therein into an area corresponding to a location of a service line (service line-220);
generating a wave in the service line through an exposed portion of the service line using a vibratory shaker (vibratory shaker-230) or other wave generation device;
detecting, by the wave measurement device, at least two substrate waves (substrate waves-235, abstract) created by the service line wave passing through the service line and into a substrate;
identifying, by a data acquisition system (DAQ-260), a velocity and an attenuation of the service line wave using the detected at least two substrate waves (Abstract, Paragraphs 0013, 0018, 0025 and 0035-0040;
comparing the velocity and attenuation of the service line wave to a known set of wave velocities and attenuations corresponding to different service line materials (Paragraph 0038-0039); and
identifying a service line material in the service line by comparing the velocity and attenuation of the service line wave with the known set of wave velocities and attenuations corresponding to different service line materials (Paragraphs 0004, 0013, 0015, 0038-0040 ). (See Figs 1-3)
Regarding claim 2, Sjoblom discloses the detecting is done using more than one probe (probes-200). (Paragraph 0025 and 0028)
Regarding claim 3, Sjoblom discloses at least two probes (probes-200) are spaced at a distance (See Fig 2) from one another. (Paragraphs 0028-0029)
Regarding claim 4, Sjoblom discloses a first probe and a second probe of the probes detect the substrate wave at different times (Claim 4)
Regarding claim 5, Sjoblom discloses the wave measurement devices (probes-200) comprise accelerometers (accelerometers-216). (Paragraph 0025 and 0028)
Regarding claim 6, Sjoblom discloses the accelerometers (accelerometers-216) are located within a protective sheath (Sheath-210). (Paragraph 0030)
Regarding claim 7, Sjoblom discloses the generation of a service line wave (service line waves-232) is done using a vibratory shaker (shaker-230) attached to the service line. (Paragraph 0025, Fig 2)
Regarding claim 8, Sjoblom discloses the service line wave (waves-232) has a frequency of between 0.01 kHz to 1,000 kHz and above. (Paragraph 0035)
Regarding claim 9, Sjoblom discloses an amplitude of the service line is adjusted. (Claim 10)
Regarding claim 10, Sjoblom discloses a nondestructive evaluation apparatus (Abstract, Fig 2, claim 11) for determining a material used in a below ground service line (service line -220) comprising:
a probe (probes-200 includes accelerometers-216) with a wave measurement device therein, wherein each probe is configured for insertion into an area corresponding to a location of a service line (service line-220);
a vibratory shaker (vibratory shaker-230) or impact hammer that generates a service line wave (waves-232) through an exposed portion of the service line;
a wave measurement device (probes-200 includes accelerometers-216)that detects at least two substrate waves (substrate waves-235, abstract) created by the service line wave passing through the service line and into a substrate (substrate-250);
a data acquisition system (DAQ-260) that identifies a velocity and attenuation of the service line wave using the detected at least two substrate waves (Abstract, Paragraphs 0013, 0018, 0025 and 0035-0040); and
a processor (DAQ-260, Paragraph 0038-0039) that compares the velocity and attenuation of the service line wave to a known set of wave velocities and attenuations corresponding to different service line materials and identifies (Paragraphs 0004, 0013, 0015, 0038, 0040) a service line material in the service line by comparing the velocity and attenuations of the service line wave with the known set of wave velocities and attenuations corresponding to different service line materials. (Figs 1-3)
Regarding claim 11, Sjoblom discloses more than one probe (probes-200). (Paragraph 0025 and 0028)
Regarding claim 12, Sjoblom discloses at least two probes (probes-200) are spaced at a distance (Fig 2) from one another. (Paragraphs 0028-0029)
Regarding claim 13, Sjoblom discloses a first probe and a second probe of the probes detect the substrate wave at different times. (Claim 4)
Regarding claim 14, Sjoblom discloses the wave measurement device is an accelerometer (accelerometers-216). (Paragraph 0025 and 0028)
Regarding claim 15, Sjoblom discloses the probe (probes-200) comprises a cavity (cavity-212) in which the accelerometer (accelerometer-216) is located. (Paragraph 0030-0031, Fig 3)
Regarding claim 16, Sjoblom discloses the probe (probes-200) comprises a hardened tip (tip-214). (Paragraph 0030-0031, Fig 3)
Regarding claim 17, Sjoblom discloses the service line wave (waves-232) has a frequency of between 0.01 kHz to 1,000 kHz and higher. (Paragraph 0035)
Regarding claim 18, Sjoblom discloses the vibratory shaker (shaker-230) adjusts an amplitude of the service line wave. (Claim 10)
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-14, and 16-20 of U.S. Patent No.10145820 to Drexel University (hereinafter “Drexel”).
Although the claims at issue are not identical, they are not patentably distinct from each other because in claim 1 of the instant application, applicant’s claims, A nondestructive evaluation method for determining a material used in a below ground service line comprising: inserting a probe with a wave measurement device therein into an area corresponding to a location of a service line; generating a wave in the service line through an exposed portion of the service line using a vibratory shaker or other wave generation device; detecting, by the wave measurement device, at least two substrate waves created by the service line wave passing through the service line and into a substrate; identifying, by a data acquisition system, a velocity and an attenuation of the service line wave using the detected at least two substrate waves; comparing the velocity and attenuation of the service line wave to a known set of wave velocities and attenuations corresponding to different service line materials; and identifying a service line material in the service line by comparing the velocity and attenuation of the service line wave with the known set of wave velocities and attenuations corresponding to different service line materials.
Drexel discloses in claim 1, a nondestructive evaluation method for determining a material used in a below ground service line comprising: inserting a probe with a wave measurement device therein into an area corresponding to a location of a service line; generating a service line wave through an exposed portion of the service line using a vibratory shaker; detecting, by the wave measurement device, at least two substrate waves created by the service line wave passing through the service line and into a substrate; identifying, by a data acquisition system, a velocity of the service line wave using the detected at least two substrate waves; comparing the velocity of the service line wave to a known set of wave velocities corresponding to different service line materials; and identifying a service line material in the service line by comparing the velocity of the service line wave with the known set of wave velocities corresponding to different service line materials.
Although the scope of claims 1-18 of the instant application and claims 1-4, 6-14, and 16-20 of the Drexel patent are very similar, the difference between the present claimed invention claim and the Drexel claim is that the instant application utilizes a “other wave generation device”, “identifying an attenuation”, and “comparing the attenuation”, wherein the Drexel patent claim does not use attenuation. The use of attenuation limitations can be found in claims 9 and 10 of the Drexel patent.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to use the teachings of Drexel as a general teaching to arrive at the instant application because the same elements are used to arrive at the same invention.
Limitations of Claims 2 of the instant application correspond to claim 2 of the Drexel Patent.
Limitations of Claims 3 of the instant application correspond to claim 3 of the Drexel Patent.
Limitations of Claims 4 of the instant application correspond to claim 4 of the Drexel Patent.
Limitations of Claims 5 of the instant application correspond to claim 6 of the Drexel Patent.
Limitations of Claims 6 of the instant application correspond to claim 7 of the Drexel Patent.
Limitations of Claims 7 of the instant application correspond to claim 8 of the Drexel Patent.
Limitations of Claims 8 of the instant application correspond to claim 9 of the Drexel Patent.
Limitations of Claims 9 of the instant application correspond to claim 10 of the Drexel Patent.
Limitations of Claims 10 of the instant application correspond to claim 11, and 19-20 of the Drexel Patent.
Limitations of Claims 11 of the instant application correspond to claim 12 of the Drexel Patent.
Limitations of Claims 12 of the instant application correspond to claim 13 of the Drexel Patent.
Limitations of Claims 13 of the instant application correspond to claim 14 of the Drexel Patent.
Limitations of Claims 14 of the instant application correspond to claim 16 of the Drexel Patent.
Limitations of Claims 15 of the instant application correspond to claim 17 of the Drexel Patent.
Limitations of Claims 16 of the instant application correspond to claim 18 of the Drexel Patent.
Limitations of Claims 17 of the instant application correspond to claim 19 of the Drexel Patent.
Limitations of Claims 18 of the instant application correspond to claim 20 of the Drexel Patent.
Conclusion
The prior art as cited on the PTO-892 is made of record and not relied upon but considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIGEL H PLUMB whose telephone number is (571)272-8886. The examiner can normally be reached Monday-Friday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Breene can be reached at 571-272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIGEL H PLUMB/Examiner, Art Unit 2855
/Eric S. McCall/Primary Examiner, Art Unit 2855