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 .
Response to Arguments/Amendments
This Office Action is responsive to the amendment filed 1/16/2026. Claims 1-6, 8-9, 18, 20-30 are pending. Claims 1, 4, 8, 9, 18, and 20 have been amended. Claims 21-30 are new.
Claims 1-7 and 18-20 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,270,540. The Terminal Disclaimer filed on 1/16/2026 has been disapproved on 1/30/2026 because the person who signed the Terminal Disclaimer is not the applicant, patentee, or an attorney or agent of record. The rejection of claims 2-7 and 18-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,270,540 is withdrawn in response to Applicant’s amendments. The rejection of claims 1, and 18 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,270,540 still appears to be appropriate so has been maintained.
Claims 1-7 and 18-20 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,313,632. The rejection of claims 2-7 and 18-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,313,632 is withdrawn in response to Applicant’s amendments. The rejection of claims 1, and 18 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,313,632 still appears to be appropriate so has been maintained.
The rejections of claims 4 and 18-20 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn in response to Applicant’s amendments.
Claims 1 and 7 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krowech (US 2009/0282631). Regarding claim 1, Applicant argues that Krowech ‘631 does not disclose an elongate wedge because the tines 44/44a/48 do not constitute a first wedge half and a second wedge half. This is not persuasive because the tines 44/44a/48 collectively form a hydraulic wedge device (40), and the separate tines, as they spread apart, can be broadly and reasonably construed as being the wedge halfs of the wedge (Figure 11). Additionally, Applicant argues that the tines 44/44a/48 separate at a far end resulting in the tubes and fins being separated more at the far end. This is not persuasive because either end of the wedge device (40) can be construed as the near end or the far end, such that a portion near the pivot point or the stop blocks (50) can be at the far end. Furthermore, both the portion of the wedge (40) at the pivot point or stop blocks (50) and the tip portion of the tines (44/44a/48) can laterally separate to spread apart tubes (Figure 11). The rejection of claim 7 under 35 U.S.C. 102(a)(1) as being anticipated by Krowech (US 2009/0282631) is withdrawn in response to Applicant’s amendments.
The rejection of claims 1-3, 5, 6, and 19 under 35 U.S.C. 102(a)(1) as being anticipated by Krowech (US 2016/0116158) is withdrawn in response to Applicant’s amendments. Claim 18 was rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krowech (US 2016/0116158) and has been amended to recite additional details of the plate and elongate wedge. However, Krowech ‘158 is still considered to meet claim 18 because it has a plate (at 44 or 110) and an elongate wedge (40) that both extend in 3-dimensions, and the plate and near end of the wedge can be sliced in arbitrary planes and arbitrary locations to meet the cross-sectional area limitations.
The rejections of claims 4 and 20 under 35 U.S.C. 103 as being unpatentable over combinations of Krowech ‘158 and Krowech ‘631 are withdrawn in response to Applicant’s amendments.
In response to Applicant’s amendments, new ground(s) of rejection are applied below.
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, 25, and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,270,540. Although the claims at issue
are not identical, they are not patentably distinct from each other because the instant claims
are substantially anticipated by the conflicting claims, except for minor differences in language
and/or minor obvious differences. Additionally, see the following prior art rejections for discussions of what is known in the prior art and considered to be obvious to a PHOSITA.
Claims 1, 18, 25, and 26 are rejected on the ground of nonstatutory double patenting as
being unpatentable over claims 1-19 of U.S. Patent No. 11,313,632. Although the claims at issue
are not identical, they are not patentably distinct from each other because the instant claims
are substantially anticipated by the conflicting claims, except for minor differences in language
and/or minor obvious differences. Additionally, see the following prior art rejections for
discussions of what is known in the prior art and considered to be obvious to a PHOSITA.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-6, 20-24, and 28-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 2-6 and 28-30 are drawn to an embodiment having features of a plate which is shown as element 58 in Figures 20-26. Claims 2-6 and 28-30 are dependent from claims 1 and 27, respectively, which are drawn to an embodiment having an elongate wedge having a first wedge half and a second wedge half shown as elements 28, 76, and 78 in Figures 27-32. There is no apparent original support for an embodiment combining the features of the species shown in Figures 20-26 with the species shown in Figures 27-32. The claimed invention has not been described in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing.
Claims 20-24 are drawn an embodiment having features of an elongate wedge having a first wedge half and a second wedge half shown as elements 28, 76, and 78 in Figures 27-32. Claims 20-24 are dependent from claim 18 which is drawn to an embodiment having a plate which is shown as element 58 in Figures 20-26. There is no apparent original support for an embodiment combining the features of the species shown in Figures 20-26 with the species shown in Figures 27-32. The claimed invention has not been described in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing.
Claims 2-6, 20-24, and 28-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 2-6 and 28-30 are drawn to an embodiment having features of a plate which is shown as element 58 in Figures 20-26. Claims 2-6 and 28-30 are dependent from claims 1 and 27, respectively, which are drawn to an embodiment having an elongate wedge having a first wedge half and a second wedge half shown as elements 28, 76, and 78 in Figures 27-32. There is no apparent original support for an embodiment combining the features of the species shown in Figures 20-26 with the species shown in Figures 27-32. The disclosure is insufficient to enable one skilled in the art to make and use the claimed invention because the disclosure lacks sufficient details of the construction and structure of the claimed apparatus to enable a PHOSITA to make and/or use the invention without undue experimentation. The specification appears to be silent with regard to any details of how the different embodiments would be combined, lacking direction provided by the inventor and any working examples. The embodiment shown in Figures 27-32 includes structural elements, such as an expanding wedge (76, 78), a threaded rod (80), a parallel oriented gate (82), and a hose (86) that appear not to readily cooperate with or to interfere with the plate structure (58) of the embodiment of Figures 20-26, such that a combination of these embodiments would likely require substantial reengineering and undue experimentation. Additionally, there is no indication that such an embodiment is known in the prior art. Based on these factors, the disclosure is considered not to be enabling for the claimed embodiment.
Claims 20-24 are drawn to an embodiment having an elongate wedge having a first wedge half and a second wedge half shown as elements 28, 76, and 78 in Figures 27-32. Claims 20-24 are dependent from claim 18 which is drawn to an embodiment having features of a plate which is shown as element 58 in Figures 20-26. There is no apparent original support for an embodiment combining the features of the species shown in Figures 20-26 with the species shown in Figures 27-32. The disclosure is insufficient to enable one skilled in the art to make and use the claimed invention because the disclosure lacks sufficient details of the construction and structure of the claimed apparatus to enable a PHOSITA to make and/or use the invention without undue experimentation. The specification appears to be silent with regard to any details of how the different embodiments would be combined, lacking direction provided by the inventor and any working examples. The embodiment shown in Figures 27-32 includes structural elements, such as an expanding wedge (76, 78), a threaded rod (80), a parallel oriented gate (82), and a hose (86) that appear not to readily cooperate with or to interfere with the plate structure (58) of the embodiment of Figures 20-26, such that a combination of these embodiments would likely require substantial reengineering and undue experimentation. Additionally, there is no indication that such an embodiment is known in the prior art. Based on these factors, the disclosure is considered not to be enabling for the claimed embodiment.
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 23-24 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.
Claim 23 recites the limitations “the first wedge half” and “the second wedge half." There is insufficient antecedent basis for these limitations in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krowech (US 2009/0282631; hereafter “Krowech ‘631”).
Regarding claims 1 and 26, Krowech ‘631 discloses a deep cleaning alignment equipment used to clean a heat recovery steam generator system including a plurality of metallic tubes, wherein each of the plurality of tubes includes a base with a plurality of fins extending outwardly from the base, the deep cleaning alignment equipment comprising: an elongate wedge having a near end and a far end separated by a length, wherein the far end of the wedge is configured to contact and spread the plurality of tubes and the plurality of fins to form a channel therebetween (Figure 10: 40; either end could be construed as the far end or near end), the elongate wedge further comprising: a first wedge half (44/44a); and a second wedge half (48); wherein the first wedge half and the second wedge half are movable between: a collapsed configuration having a first width (Figures 10-11; paragraph 26); an expanded configuration having a second width where the first wedge half and the second wedge half are laterally separated at the near end (Figures 10-11; paragraph 26; both the tip of the tines and the portion at element 50 are laterally separated); and wherein the second width is wider than the first width (Figures 10-11; paragraph 26); and a wand configured to spray one of a liquid or a gas about the heat recovery steam generator system (20); wherein the elongate wedge contacts the plurality of tubes and the plurality of fins about an extended surface area to minimize a stress force between the wedge and the plurality tubes and the plurality of fins (see Figures 12-23; also note that this limitation is considered to be intended use of the apparatus); and wherein the wand is removably insertable into the channel (see Figures 12-23; also note that this limitation is considered to be intended use of the apparatus).
The limitations directed to the heat recovery steam generator system and the use of the
deep cleaning alignment equipment are intended use capable of being met by the apparatus of
Krowech '631. Also note that the limitation, "wherein the elongate wedge contacts the
plurality of tubes and the plurality of fins about an extended surface area to minimize a stress
force between the wedge and the plurality tubes and the plurality of fins" could be met by
having an appropriate heat recovery steam generator system and by using the apparatus of
Krowech '631 in such a way so as to minimize stress. The claimed intended use must result in a
structural difference between the claimed invention and the prior art in order to patentably
distinguish the claimed invention from the prior art.
Regarding claim 26, Krowech ‘631 discloses wherein the elongate wedge further comprises a hinge located between the first wedge half and the second wedge half at the far end (Figures 10-11; paragraph 26); and wherein the first wedge half and the second wedge half pivot about the hinge to the expanded configuration (Figures 10-11; paragraph 26).
Claim(s) 18 and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krowech (US 2016/0116158, hereafter “Krowech ‘158”).
Regarding claim 18, Krowech '158 discloses a deep cleaning alignment equipment
comprising: an elongate wedge configured to contact and spread a plurality of tubes and fins to
form a channel therebetween and having a near end and a far end (40); a plate configured to be releasably secured to a near end of the elongate wedge, wherein the plate extends in the sagittal plane and the elongate wedge extends in the transverse plane substantially perpendicular to the sagittal plane (44 or 110; 40, 44, and 110 all extend in 3-dimensions); and a wand configured to spray one of a liquid or a gas about the heat recovery steam generator system (20); and wherein the wand is removably insertable into the channel (Figures 2, 3; note that this limitation is intended use); wherein the plate has a first cross sectional area (see Figures 4-6; note that the slice can be in any arbitrary location or plane, such as a diagonal plane); wherein the near end of the elongate wedge has a second cross sectional area (see Figures 4-6; note that the slice can be in any arbitrary location or plane, such as a diagonal plane); and wherein the first cross sectional area is greater than the second cross sectional area (see Figures 4-6; the cross sectional slices can be placed in appropriate locations to meet the area limitations).
The limitations directed to the tubes and fins and the use of the deep cleaning
alignment equipment are intended use capable of being met by the apparatus of Krowech '158.
The claimed intended use must result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed invention from the prior art.
Regarding claim 25, Krowech ‘158 discloses at least one fastener (76; paragraph 79); wherein the plate further comprises: a substantially planar base (Figure 6: upper portion of 112); at least one bracket extending from the substantially planar base (downwardly extending element 116); and at least one plate opening extending through that least one bracket (120); wherein the elongate wedge further comprises at least one wedge opening extending therethrough (see 40 at 76; paragraph 67, 79): wherein the at least one fastener extends through the at least one plate opening and the at least one wedge opening to secure the plate to the elongate wedge (76, 120; paragraphs 67, 79).
Allowable Subject Matter
Claims 27 is allowed.
Claims 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: the prior art does not disclose, or render obvious, the deep cleaning alignment equipment as recited in the combination of claims 1 and 8; the combination of claims 1 and 9; or as recited in claim 27. There is no apparent teaching, suggestion, or motivation to modify the closest prior art, Krowech (US 2009/0282631) or Krowech (US 2016/0116158), to further include the features of the deep cleaning alignment equipment recited in claims 8, 9, or 27.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G CORMIER whose telephone number is (571)270-7386. The examiner can normally be reached M-F: 9:30 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Barr can be reached at (571) 272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID G. CORMIER
Examiner
Art Unit 1711
/DAVID G CORMIER/ Primary Examiner, Art Unit 1711
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