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 1-8, 16-22 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 11-13 and 29-30 of U.S. Patent No. 12,066,129. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose substantially similar limitations. Instant claims substantially similar to the patent claims are denoted in the table below.
US 18/770,464 Claims
USPN 12,066,129 Claims
1
1
2
1
3
29
4
30
5
4
6
5
7
6
8
3
16
7
17
8
18
9
19
8
20
11
21
12
22
13
24
7
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, 14-21 and 29-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laduca (US 2018/0169378).Regarding Claim 1:In Figures 1A-3G, Laduca discloses an expandable tubing (100) comprising: a tube body (102); and a reinforcement (structural element 120 which can act as a reinforcement by itself or with an additional reinforcement element 148 as mentioned in paragraph [0038] and shown in Figure 3D) positioned on and/or within a wall of the tube body (as mentioned in paragraph [0027]), where the reinforcement and the tube body are expandable from a neutral state (neutral or non-expanded state shown in Figure 2C and see paragraph [0034]) to an expanded state (expanded state shown in Figure 2D and see paragraph [0034]), and where the reinforcement (120) is configured to inhibit or prevent the tube body from kinking (as mentioned in paragraph [0038], 120 with reinforcing element 148 can increase kink resistance).Regarding Claim 16:In Figures 1A-3G, Laduca discloses an expandable tubing (100) comprising: a tube body (102); and a reinforcement (structural element 120 which can act as a reinforcement by itself or with an additional reinforcement element 148 as mentioned in paragraph [0038] and shown in Figure 3D) positioned on and/or within a wall of the tube body (as mentioned in paragraph [0027]), where the reinforcement (52, 56) is configured to transmit a compressive force along a length of the tube body (stress induced compressed zig zag structural element 120 is mentioned in paragraph [0031] indicating that compressive force can be transmitted along a length of the tube body 102) and/or is configured to transmit a torque along the tube body (as mentioned in paragraph [0038], the reinforcement increases a torque transmission).Regarding Claim 2:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the reinforcement is configured to transmit an axial force along a length of the tube body (as mentioned in Laduca’s claim 1), and/or where the reinforcement is configured to transmit a torque along the tube body (as mentioned in paragraph [0038], the reinforcement increases a torque transmission).Regarding Claims 3, 17 and 19:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the reinforcement comprises an undulating pattern (see paragraph [0007] and Figure 3G for the undulating pattern) configured to transmit a torque along the tube body (as mentioned in paragraph [0038], the reinforcement increases a torque transmission).Regarding Claim 4:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the reinforcement comprises a coil having a zigzag pattern (see paragraph [0028] and Figure 1A). Regarding Claims 5 and 18:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the reinforcement comprises a zigzag wire (120, see Figure 2C) that extends helically around a lumen (104) of the tube body multiple turns (as mentioned in paragraph [0034]).Regarding Claims 14 and 29:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the tube body (102) has a wall having a wall thickness, and where the wall thickness is the same when the tube body is in the neutral state and when the tube body is in the expanded state (as mentioned in paragraph [0030]: “In certain variations the thickness T1 of the wall of the tube body 102 in the natural state remains the same or approximately the same as a thickness T2 of the wall in the expanded state.”).Regarding Claims 15 and 30:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the tube body has a wall having a wall thickness, and where the wall thickness is greater or smaller when the tube body is in the neutral state than when the tube body is in the expanded state (as mentioned in paragraph [0030]: “In certain variations the thickness T1 of the wall of the tube body 102 in the natural state remains the same or approximately the same as a thickness T2 of the wall in the expanded state. Alternate variations include devices where the thickness of the device varies between expanded and unexpanded states.” Underlined portions indicate that the thickness can vary at least slightly between the neutral state and the expanded state).Regarding Claim 20:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the reinforcement (120) comprises a peak-to-peak configuration (zig-zag shown in Figure 2C has a peak-to-peak configuration) configured to provide the tube body with column strength such that an axial force is transmittable along the length of the tube body (as mentioned in paragraph [0034], in the expanded state shown in Figure 2D the reinforcement provides column strength while transmitting an axial force to expand the axial length of the tube).Regarding Claim 21:In Figures 1A-3G, Laduca discloses the expandable tubing (100), where the reinforcement (120) comprises a nested configuration (see paragraph [0007] configured to provide the tube body with column strength (column strength is evident from paragraph [0038]) such that an axial force is transmittable along the length of the tube body (axial transmission of force is depicted in Figures 2A-2D and mentioned in paragraphs [0033]-[0034]).
Claim(s) 1, 8-9, 13, 16, 24-25 and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Block et al. (herein Block) (US 2019/0331261).Regarding Claim 1:In Figures 1-5, Block discloses an expandable tubing (16) comprising: a tube body (20); and a reinforcement (52, 56) positioned on and/or within a wall (44) of the tube body (see Figure 2), where the reinforcement and the tube body are expandable from a neutral state (flattened state, see Figure 3) to an expanded state (circular expanded state, see paragraph [0030]), and where the reinforcement (52, 56) is configured to inhibit or prevent the tube body from kinking (see paragraphs [0047]-[0048]).Regarding Claim 16 :In Figures 1-5, Block discloses an expandable tubing (16) comprising: a tube body (20); and a reinforcement (52, 56) positioned on and/or within a wall (44) of the tube body (see Figure 2), where the reinforcement and the tube body are expandable from a neutral state (flattened state, see Figure 3) to an expanded state (circular expanded state, see paragraph [0030]), where the reinforcement (52, 56) is configured to transmit a compressive force along a length of the tube body (as is well known in the art, when the reinforcement 52, 56 is compressed from an expanded state to a neutral state, it will transmit a compressive force along a length of the tube body) and/or is configured to transmit a torque along the tube body (as is well known in the art, when 52, 56 is torqued there is no structural element in Block that would prevent transmission of at least some torque between 52, 56 and 20).
Regarding Claims 8 and 24:In Figures 1-5, Block discloses the expandable tubing (16), where axial expansion of the tube body is inhibited or prevented (as mentioned in paragraph [0024]: “The inner and outer 52, 56 reinforcements form a flexible support to inhibit significant expansion or elongation of the tubular body 20 of the garden hose assembly 16 while still retaining flexibility.”).Regarding Claims 9 and 25:In Figures 1-5, Block discloses the expandable tubing (16), where the axial expansion of the tube body is inhibited or prevented via a braid or a spiral wrap (as seen in Figure 2 and mentioned in paragraph [0006] the reinforcement 52, 56 forms a spiral wrap that inhibits axial expansion as discussed in the rejection of claim 8).Regarding Claim 13 and 28:In Figures 1-5, Block discloses the expandable tubing (16), where the tube body has the same length when the tube body is in the neutral state and when the tube body is in the expanded state (as mentioned in paragraph [0024]: “The inner and outer 52, 56 reinforcements form a flexible support to inhibit significant expansion or elongation of the tubular body 20 of the garden hose assembly 16 while still retaining flexibility.” This indicates that the length of the tube body would remain same between the neutral state and the expanded state).
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) 6-7 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Block et al. (herein Block) (US 2019/0331261)Regarding Claim 6-7 and 23:In Figures 1-5, Block discloses the expandable tubing (16), where the tube body and the reinforcement are bendable into a curve without kinking (as seen in Figure 3, the tube body 20 and the reinforcement 52, 56 are bendable such that at the outer edges of the inner surface 68, the tube can be nearly fully flattened to achieve a bend radius of nearly 0 mm thereby forming the flattened shape with a height of 0 inches, see paragraph [0044]. Kinking is prevented between a flattened shape to an expanded shape as mentioned in paragraph [0046]). This indicates that the tube body is bendable to form a variable radius curve of up to nearly 0 radius while preventing kinking, indicating that this radius is a result effective variable. Block is silent regarding the specific values of the bend radius as claimed. However it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to bend the tube body and reinforcement to a curve without kinking such that this curve had a radius of 8.0 mm to 15.0 mm (per claim 6) or a radius of 12.7 mm or less (note that 0 mm is possible with Block as explained above) (per claims 7 and 23), since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).Regarding Claim 22:In Figures 1-5, Block discloses the expandable tubing (16), where a ratio of a wall thickness of the tube body (20) to a diameter of a lumen (44) of the tube body can be extremely small in the flattened state (as mentioned in paragraph [0044], the elliptical shape of the lumen can be roughly 0.75″ wide by 0″ to 0.125″ tall. This indicates that the minor diameter of the lumen 44 depicted as B in Figure 3 can be extremely small almost approaching 0 in a flattened state). Therefore, even though Block does not explicitly disclose the claimed range, one of ordinary skill could realize that this ratio can be controlled within the claimed range of 0.05 to 0.10. It would have been an obvious matter of design choice to change the wall thickness of the tube body or diameter of the lumen such that the ratio of a wall thickness of the tube body to a diameter of the lumen of the tube body would comprise 0.05 to 0.10, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 10-12 and 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Block et al. (herein Block) (US 2019/0331261) as evidenced by Herweck et al. (herein Herweck) (US 2002/0183716). Regarding Claims 10-12 and 26-27:Block states that the tube body can comprise thermoplastics but is silent regarding whether this thermoplastic can be radial ePTFE. However, in paragraph [0012] Herweck discloses forming a tube body with expanded polytetrafluoroethylene (ePTFE) such that when a radial expansion force is applied to the tube, the tube expands from a first diameter to a second diameter with minimal longitudinal stretching (for instance 1.1:1, see paragraph [0068]).Hence, based on Herweck’s teachings, it can be seen that radial ePTFE is a suitable material for a radially expandable tube body.
Therefore, based on Herweck’s evidence, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to form Block’s tube body (20) from a radial ePTFE (radial ePTFE of the type disclosed by Herweck), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
After said modification, the tube body would comprise radial ePTFE, where the radial ePTFE is configured to allow radial expansion but inhibit or prevent axial expansion of the tube body (since the existing reinforcement element in Block’s tube in combination with this radial ePTFE tube body would inhibit axial expansion while permitting radial expansion. Per claims 10-12 and 26-27).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20150152984 – Expandable tubing with reinforcement.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINICK L PLAKKOOTTAM whose telephone number is (571)270-7571. The examiner can normally be reached Monday - Friday 12 pm -8 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINICK L PLAKKOOTTAM/Primary Examiner, Art Unit 3746
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