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. 12,076,909 (Application No. 17/724,380). Although the claims at issue are not identical, they are not patentably distinct from each other because 1-20 of U.S. Patent No. 12,076,909 (Application No. 17/724,380) encompass the scope of instant claims 1-20.
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) 1-14 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carlson (US 7,965,930) in view of Stent (US 3,938,929).
Carlson discloses a tubing wall formed of an elongate thermoplastic ribbon (22; fig 3) helically wrapped and heat bonded to itself to form the tubing wall (col 4, lines 4-28); one or more elongate conductors (16; fig 4; col 3, lines 36-67) helically wrapped around and along the tubing wall; and an elongate reinforcement rib (14; figs 1-3) helically wrapped around and along the tubing wall such that the tubing wall includes a first portion in which the elongate reinforcement rib covers the one or more elongate conductors (seen in fig 3) and a second portion in which the one or more elongate
conductors are uncovered by the elongate reinforcement rib and the elongate reinforcement rib wraps around the tubing wall (not taught by the reference).
The reference to Stent discloses that it is old and well known in the art to provide a hose wall (H; formed by helically winding a plastic strip; col 3, lines 1- 23) with a helical reinforcing rib (9; fig 1; col 3, lines 1-62), where the helical reinforcing rib can be provided with an electrical wire (9b,10; figs 6, 7; col 5, lines 4-68), where the wire (10) can be covered in the reinforcing rib material (9), and can also be formed where the reinforcing rib material (9) does not cover the wire (9b; fig 7) but rather is spaced therefrom, thereby teaching the equivalence of either covering the wire with reinforcing rib material or leaving the wire uncovered by rib material is known in the art.
It would have been obvious to one skilled in the art to modify the ribs in Carlson such that the conductors are uncovered by the elongate reinforcement rib and the elongate reinforcement rib wraps around the tubing wall as suggested by Stent where such is taught to be an equivalent manner to provide a conducting wire and rib to the helical ribbon formed hose wall, where one would expect results and the benefits of not covering the wire and/or providing ribs and wires separate would provide the hose wall with more reinforcement and thereby make it stronger.
With respect to claim 2, the elongate reinforcement rib is heat bonded to the tubing wall at the first portion of the tubing wall and is heat bonded to the tubing wall at the second portion of the tubing wall (the heat bonding is taught by Carlson as set forth above). The reference to Stent also discloses heat bonding of the reinforcing rib where the extruded materials bond which is a form of heat bonding and the location that they are provided, therefore the combination above would cover this limitation by setting forth the proper location that would occur from the combination of references above and is
obvious for the same reasons.
With respect to claim 3, the second portion of the tubing wall comprises an end of the tubing wall. Upon modification as taught above, this limitation would be met since the tube wall including the ends would have the required structure, therefore it is met by the combination set forth above for the same reasons it is obvious.
With respect to claim 4, the elongate reinforcement rib is helically wrapped around and along the tubing wall such that the tubing wall includes a third portion in which the one or more elongate conductors are uncovered by the elongate reinforcement rib and the elongate reinforcement rib wraps around the tubing wall, and the first portion of the tubing wall is positioned between the second portion and the third portion of the tubing wall, and the third portion comprises an end of the tubing wall. This
limitation would also be met by the combination above, where upon modification the hose wall can be divided into any number or sections which can be considered first, second and third, and can be selected to meet this limitation since it is merely setting forth what one calls each section, and since the structure exists throughout the entire hose wall it would lead to the same structure including at the ends and between the ends, and the combination above would still cover this limitation as well and obvious for the same reasons, since the combination covering the whole length of the hose would meet this limitation as well from end to end and there between.
With respect to claim 5, the tubing wall includes a receiving portion helically wrapped around and along the tubing wall and configured to receive the one or more elongate conductors (seen as 28a in fig 3; col 4, lines 4-16 discuss the grooves for the wires in Carlson).
With respect to claim 6, one or more of the elongate reinforcement rib or the one or more elongate conductors are offset from the receiving portion at the second portion of the tubing wall. As modified above, with the teachings of Stent having he elongate ribs alternating with the conductors, the modified structure set forth above would meet this claim language as well under the same combination
for the same reasons it is obvious.
With respect to claim 7, the receiving portion includes one or more channels for receiving the one or more elongate conductors (28a in Carlson fig 3, discussed above).
With respect to claim 8, the receiving portion is thicker than an adjacent portion of the tubing wall (fig 3 of Carlson teaches this; section with grooves 28a of strip 22 is thicker than the adjacent portion of the strip forming the tube wall).
With respect to claim 9, one or more of the elongate reinforcement rib or the one or more elongate conductors are positioned on the adjacent portion of the tubing wall at the second portion of the tubing wall. Upon modification of having the area of the strip with the conductors alternate with the area of the strip with the reinforcing rib, it is clear once modified by the teachings of Stent the reinforcing rib at least be positioned on the adjacent portion next to the portion of the strip with wires, and therefore the combination set forth above would also cover this limitation as well and would be obvious for the same reasons as above.
With respect to claim 10, the receiving portion is formed with at least one rib having a convex surface (grooves 28a in the thicker portion of the strip of Carlson in fig 3 would meet this limitation where the grooves are convex surface features and the thicker portion of the strip can be considered as a rib as well).
With respect to claim 11, such is similar to claim 1 and for the same reasons would be met by the combination above, including: Tubing comprising: a tubing wall formed of an elongate thermoplastic ribbon helically wrapped and heat bonded to itself to form the tubing wall (22; fig 3; col 4, lines 4-62); one or more elongate
conductors helically wrapped around and along the tubing wall (16; fig 3; see above discussion); and an elongate reinforcement rib helically wrapped around and along the tubing wall (14; fig 3, see discussion above) such that the tubing wall includes a first portion in which the elongate reinforcement rib is bonded to the tubing wall and a second portion formed by the elongate reinforcement rib having a reduced bonding to the tubing wall relative to the first portion (not taught by Carlson). The reference
to Stent discloses that it is old and well known in the art to provide a hose wall (H; formed by helically winding a plastic strip; col 3, lines 1-23) with a helical reinforcing rib (9; fig 1; col 3, lines 1-62), where the helical reinforcing rib can be provided with an electrical wire (9b,10; figs 6, 7; col 5, lines 4-68), where the wire (10) can be covered in the reinforcing rib material (9), and can also be formed where the reinforcing rib material (9) does not cover the wire (9b; fig 7) but rather is spaced therefrom, thereby teaching the equivalence of either covering the wire with reinforcing rib material or leaving the wire uncovered by rib material is known in the art, and that in the embodiments, the amount of embedding of the reinforcing element differs such as figure 6 which teaches much more embedding of the reinforcing bead and conductive wire than seen in fig 7, which would lead to reduced bonding since there is less strip material holding the reinforcement in place and less of a bond there between due to less contact surface area. It would have been obvious to one skilled in the art to modify the ribs in
Carlson such that the tubing wall includes a first portion in which the elongate reinforcement rib is bonded to the tubing wall and a second portion formed by the elongate reinforcement rib having a reduced bonding to the tubing wall relative to the first portion as suggested by Stent where such is taught to be an equivalent manner to provide a conducting wire and rib to the helical ribbon formed hose wall, where one would expect results and the benefits of not covering the wire and/or providing
ribs and wires separate would provide the hose wall with more reinforcement and thereby make it stronger and embedding the reinforcement more or less would change flexibility and allow for more flexibility in the hose wall with less bonding between the reinforcing element and the hose wall strip.
With respect to claim 12, the elongate reinforcement rib at the first portion covers the one or more elongate conductors and the elongate reinforcement rib at the second portion covers the one or more elongate conductors. This would be covered by the combination of references as set forth above and would for the same reasons be obvious for the same reasons as above.
With respect to claim 13, the elongate reinforcement rib at the second portion has a partial bond to the tubing wall. This is covered by the teachings of the combination for claim 11 above and for the same reasons would be obvious since the reinforcing rib can be less embedded and therefore have
only a partial bond to the wall where it embeds in the wall.
With respect to claim 14, the elongate reinforcement rib at the second portion lacks a bond to the tubing wall. This would be met by the portion of the rib not contacting the wall due to the manner in which this limitation is claimed not being specific on what portion of the reinforcement rib lacks bonding so this would be met by Carlson at least where the rib was not bonded to the strip.
With respect to claim 19, the tubing wall is cut at the second portion. This claim sets forth a method step of placing a cut at a portion of the tube, which would hold little patentable weight, and would be capable of being done by one skilled in the art to cut the tube to length, however, this limitation would also be met by the grooves 28a in Carlson can be considered as cuts at the second portion and therefore would meet this claim limitation when the manner in which the grooves are provided would be obvious to use any method, although any form of providing a groove would be considered providing a cut as well.
With respect to claim 20, the elongate reinforcement rib is helically wrapped around and along the tubing wall such that the tubing wall includes a third portion in which the elongate reinforcement rib has a reduced bonding to the tubing wall relative to the first portion, and the first portion of the tubing wall is positioned between the second portion and the third portion of the tubing wall, and the third portion comprises an end of the tubing wall. As discussed above, the sections of the tube can be defined with numbered sections, and the selection of these sections with respect to how embedded the ribs are, and therefore having reduced bonding as discussed above, would be met by the combination of references for the same reasons above, and are obvious to combine the teachings of the references for the same reason as set forth above in the discussion of claim 11.
Allowable Subject Matter
Claims 15-18 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 prior art does not teach or suggest applicant’s recited tubing wherein a substance is introduced between the elongate reinforcement rib and the tubing wall to reduce the bonding of the elongate reinforcement rib to the tubing wall at the second portion
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
September 29, 2026
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