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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,071,759. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 12,071,759 and are thus encompassed by said claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,643,801. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 11,643,801 and are thus encompassed by said claims.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second expandable seal per claims 7 and 14 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-20 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.
With regard to claims 1, 10, and 17, it is unclear what applicant is referencing by “expandable seal”. The phrase “expandable seal” does not appear in the specification. It is unclear if applicant is referencing the expandable coiled wall or the hydrophilic gasket which expands. For the purpose of examination on the merits, the examiner has assumed the expandable seal to be the hydrophilic gasket.
Claims 2-9, 11-16, and 18-20 are dependent upon claims 1, 10, and 17.
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(s) 1 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kiest, Jr. (2019/0113168).
With regard to claim 1, Kiest discloses a system for reducing infiltrate within a wastewater management system comprising:
a circular sleeve (16) configured to be used with a cured in place pipe (paras 0003-0005) and comprising an inner cavity, first open end, second open end, and lateral porthole (fig. 2), wherein said lateral porthole of said circular sleeve extends from an exterior surface of said circular sleeve to said inner cavity (fig. 2); and an expandable seal (10) secured to said exterior surface of said circular sleeve and around said lateral porthole (fig. 2), wherein said expandable seal is configured to reduce an amount of infiltrate entering said lateral porthole by creating a water barrier between said exterior surface of said circular sleeve and a host pipe (12; fig. 2).
With regard to claim 9, Kiest further discloses said circular sleeve is configured in a way such that a diameter of said circular sleeve expands when a force is applied against an interior surface of said circular sleeve in an outward direction (paras 0041-0042).
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.
Claim(s) 2-3, 6, 10, and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kiest, Jr. (2019/0113168) in view of Eitel (2020/0378542).
With regard to claims 2-3, Kiest discloses the invention substantially as claimed however is silent regarding said circular sleeve comprises a coiled wall having a locking mechanism secured to an interior surface of said coiled wall and said locking mechanism comprises at least two slotted grooves; and at least two locking gears configured to follow said at least two slotted grooves from a first point to a second point, causing a diameter of said coiled wall to expand.
Eitel discloses a sealing system with a circular sleeve (3) that comprises a coiled wall (fig. 1) having a locking mechanism (7/9) secured to an interior surface of said coiled wall (fig. 2) and said locking mechanism comprises at least two slotted grooves (7; para 0011; fig. 2) and at least two locking gears (9) configured to follow said at least two slotted grooves from a first point to a second point, causing a diameter of said coiled wall to expand (paras 0061-0062).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kiest and utilize a coiled wall with locking mechanisms as taught in Eitel, with a reasonable expectation of success, in order to allow the device to be expanded based on the diameter of the host pipe.
With regard to claims 6 and 13, Kiest discloses the invention substantially as claimed however is silent regarding said circular sleeve is made from a malleable metal selected from a group consisting of soft stainless steel sheet metal and aluminum.
Eitel discloses the circular sleeve sleeve is made from a malleable metal selected from a group consisting of soft stainless steel sheet metal and aluminum (abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kiest and construct the sleeve from steel, as taught by Eitel, with a reasonable expectation of success, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
With regard to claims 10 and 16, Kiest discloses a system for reducing infiltrate within a wastewater management system comprising: an expandable sleeve (16) configured to be secured within a host pipe (12), wherein said expandable sleeve comprising wall and a lateral porthole extending from an exterior surface of said wall to an inner cavity of said wall (fig. 2), wherein said expandable sleeve is configured in a way such that a diameter of said expandable sleeve expands when a force is applied against an interior surface of said expandable sleeve (paras 0041-0042), wherein said expandable sleeve is configured in a way such that said diameter may increase but is prevented from decreasing once increased (figs. 3-5); and an expandable seal (10) secured to said exterior surface of said expandable sleeve and around said lateral porthole (fig. 2), wherein said expandable seal is configured to reduce an amount of infiltrate entering said lateral porthole by creating a water barrier between said exterior surface of said expandable sleeve and a host pipe (paras 0005-0006).
Kiest is silent regarding a coiled wall a locking mechanism of said expandable sleeve allows said diameter of said expandable sleeve to increase but not decrease.
Eitel discloses a sealing system with an expandable sleeve (3) that comprises a coiled wall (fig. 1) having a locking mechanism (7/9) causing a diameter of said coiled wall to expand (paras 0061-0062).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kiest and utilize a coiled wall with a locking mechanism as taught in Eitel, with a reasonable expectation of success, in order to allow the device to be expanded based on the diameter of the host pipe.
With regard to claims 14-15, Kiest, as modified, discloses the invention substantially as claimed however is silent regarding a second expandable seal secured to an interior surface of said circular sleeve around said lateral porthole, wherein said second expandable seal is configured to create a water barrier between said circular sleeve and a cured-in-place pipe wherein said second expandable seal is ring-shaped and comprises an internal diameter that is wider than said lateral porthole.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date to an additional seal, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
With regard to claims 17-20, Kiest discloses a method for sealing an annular space within a sewer connection line (fig. 2), comprising steps of: obtaining an annular space sealing apparatus comprising a circular sleeve (16) and expandable seal (10), wherein said expandable seal is positioned around a lateral porthole of a wall of said circular sleeve (fig. 2); securing said annular space sealing apparatus within a host pipe (12) having a lateral line (fig. 2); wherein said lateral porthole and said expandable seal are positioned around a lateral line connection point created between said host pipe and said lateral line (fig. 2), installing a cured-in-place pipe (20) through said host pipe and said annular space sealing apparatus (fig. 2); and cutting a hole into said cured-in-place pipe at said lateral porthole to reestablish flow from said lateral line to said host pipe (para 0015), said circular sleeve is configured in a way such that a diameter of said circular sleeve expands when a force is applied against an interior surface of said circular sleeve in an outward direction (figs. 3-5).
Kiest discloses the invention substantially as claimed however is silent regarding said circular sleeve comprises a coiled wall having a locking mechanism that allows said diameter of said circular sleeve to increase but not decrease; and at least two slotted grooves and at least two locking gears configured to follow said at least two slotted grooves from a first point to a second point, allowing said diameter of said circular sleeve to increase.
Eitel discloses a sealing system with a circular sleeve (3) that comprises a coiled wall (fig. 1) having a locking mechanism (7/9) that allows said diameter of said circular sleeve to increase but not decrease (figs. 1-2) and said locking mechanism comprises at least two slotted grooves (7; para 0011; fig. 2) and at least two locking gears (9) configured to follow said at least two slotted grooves from a first point to a second point, allowing said diameter of said circular sleeve to increase (paras 0061-0062).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kiest and utilize a coiled wall with locking mechanisms as taught in Eitel, with a reasonable expectation of success, in order to allow the device to be expanded based on the diameter of the host pipe.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kiest, Jr. (2019/0113168).
With regard to claims 7-8, Kiest discloses the invention substantially as claimed however is silent regarding a second expandable seal secured to an interior surface of said circular sleeve around said lateral porthole, wherein said second expandable seal is configured to create a water barrier between said circular sleeve and a cured-in-place pipe wherein said second expandable seal is ring-shaped and comprises an internal diameter that is wider than said lateral porthole.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date to an additional seal, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Allowable Subject Matter
Claims 4-5 and 11-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kiest discloses the thickness of the seal is approximately 0.4 inches (para 0038). The cited prior art lacks the thickness of the seal being two inches as required by the dependent claim(s) and it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prior art to achieve applicant’s invention without the benefit of hindsight and applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
11/10/2025