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 .
DETAILED ACTION
This Office Action is in response to the Response to Election/Restriction filed 12/19/2025. Claims 18-20 are pending and have been examined.
The information disclosure statements (IDS) submitted on 06/25/2024, 09/20/2024, 03/13/2025 and 12/09/2025 were considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Invention II, claims 18-20, in the reply filed on 12/19/2025 is acknowledged.
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.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 of U.S. Patent No. 11,623,254 in view of Smalser, Sr. (US 5,754,220), herein Smalser. For example, note the following relationship between claim 1 of the instant application and the patented claims.
Application No. 18/751,862
U.S. Patent No. 11,623,254
18. (Original) A pipeline inspection device, comprising:
1. A pipeline inspection device, comprising:
a cable including a camera disposed on a distal end of the cable, the camera and the cable configured to be directed into a conduit;
a cable disposed at least partially within the drum, the cable including a camera disposed on a distal end of the cable, the camera and the cable configured to be directed into a conduit;
a drum rotatably supported by the stand, the drum including an opening in a front wall of the drum;
a drum rotatably supported by the stand, the drum including an opening in a front wall of the drum;
a stand for supporting the drum, the drum being rotatably coupled to the stand;
a stand;
a hub housing electrical components of the pipeline inspection device, the hub being received within the drum via the opening;
a hub including a body at least partially insertable into and removable from the opening of the drum, the hub being electrically coupled to the cable when inserted into the opening;
a wireless communication module housed within the hub; and
a battery housing disposed on the hub; and
a battery supported by the hub, the battery and the hub being removable from the drum as a single unit.
the battery configured to provide power to the camera.
4. The pipeline inspection device of claim 1, wherein, when the hub is inserted into the drum, the battery provides power to the camera.
However, the patented claims do not explicitly teach a battery removably received within the battery housing.
In an analogous art, Smalser, which discloses a system for pipeline inspection, clearly teaches a battery removably received within the battery housing. (Fig. 3: Battery B is removably mounted in battery pack housing 94, col. 5 lines 10-36.)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims by a battery removably received within the battery housing, as taught by Smalser, for the benefit of replacing the battery.
Claims 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 of U.S. Patent No. 11,623,254 in view of Smalser (US 5,754,220) in view of Olsson et al. (US 2014/0167766), herein Olsson
Consider claim 19, the patented claims combined with Smalser clearly teach the battery housing.
However, the patented claims combined with Smalser do not explicitly teach the battery housing includes a cover that is movable between an open and a closed position.
In an analogous art, Olsson, which discloses a system for pipeline inspection, clearly teaches the battery housing includes a cover that is movable between an open and a closed position. (Figs. 2, 3: Battery compartment cap 220 can be removed from outer shell piece 210 to allow access to the battery, [0056].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the patented claims combined with Smalser by the battery housing includes a cover that is movable between an open and a closed position, as taught by Olsson, to achieve the predictable result of removing the battery from the housing.
Claim 20 of the application corresponds to claims 1, 4 of the patent in view of Smalser and Olsson [0056].
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.
Claim 18 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smalser, Sr. (US 5,754,220), herein Smalser.
Consider claim 18, Smalser clearly teaches a pipeline inspection device, (Fig. 3) comprising:
a cable including a camera disposed on a distal end of the cable, the camera and the cable configured to be directed into a conduit; (Fig. 3: Coaxial cable 32 and camera 10 are inserted into a pipe, col. 3 line 40 to col. 4 line 11.)
a drum rotatably supported by the stand, the drum including an opening in a front wall of the drum; (Fig. 4: Cable storage drum 46 includes opening 90, col. 4 line 55 to col. 5 line 9.)
a stand for supporting the drum, the drum being rotatably coupled to the stand; (Figs. 3, 4: Cable storage drum 46 is rotatably mounted to stand 44, col. 4 lines 29-65.)
a hub housing electrical components of the pipeline inspection device, the hub being received within the drum via the opening; (Figs. 1, 3, 5: Mounting sleeve 96 houses coupling assembly 50 and terminal 52, col. 3 lines 29-32, col. 5 lines 13-15.)
a battery housing disposed on the hub; (Fig. 3: Battery pack housing is secured to mounting sleeve 96, col. 5 lines 10-36.) and
a battery removably received within the battery housing, the battery configured to provide power to the camera. (Fig. 3: Battery B is removably mounted in battery pack housing 94 and powers camera 10, col. 5 lines 10-36.)
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 (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Smalser (US 5,754,220) in view of Olsson et al. (US 2014/0167766), herein Olsson.
Consider claim 19, Smalser clearly teaches the battery housing.
However, Smalser does not explicitly teach the battery housing includes a cover that is movable between an open and a closed position.
In an analogous art, Olsson, which discloses a system for pipeline inspection, clearly teaches the battery housing includes a cover that is movable between an open and a closed position. (Figs. 2, 3: Battery compartment cap 220 can be removed from outer shell piece 210 to allow access to the battery, [0056].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the system of Smalser by the battery housing includes a cover that is movable between an open and a closed position, as taught by Olsson, to achieve the predictable result of removing the battery from the housing.
Consider claim 20, Smalser combined with Olsson clearly teaches the cover of the battery housing forms a watertight seal when in the closed position. (Fig. 2: Battery compartment cap 220 forms a water-tight seal with outer shell piece 210, [0056].)
Conclusion
In the case of amending the claimed invention, applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R SCHNURR whose telephone number is (571)270-1458. The examiner can normally be reached M-F 6a-4p.
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 supervisor, Brian Pendleton can be reached at (571)272-7527. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN R SCHNURR/ Primary Examiner, Art Unit 2425