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 .
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 limitation “the seal base defining a shape being an open curve in the shape of a spiral” 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.
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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 1-15 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.
Regarding claim 1, the phrase "such as" in line 8 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 3 and 4 are indefinite in that the phrase “a fat end” is unclear. The phrase lacks antecedent basis in the specification and as such the examiner has no guidance as to what Applicant means by “fat end”. For examination purposes, the examiner will consider the alternative limitation “not being rotationally symmetric”.
Claim 10 and 13 recite the limitation "the first angle" inline 2 of each claim. There is insufficient antecedent basis for this limitation in the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The recitation “the seal base comprising a seal opening” is substantially the same as “the seal base having a seal opening” recited in claim as both transitional phrase “having” and “comprising” are both open-ended transitional phrases. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 5, 7-10 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ooka et al. (EP 0468058).
With regards to claim 1, Ooka et al. discloses a seal 10 for sealing a space between a sewer system and a repair assembly at a junction of a main pipeline and a lateral pipeline (col. 1, lines 11-13. Further, the recitation is an intended use recitation. As it has been held, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim), the seal comprising a seal base 20 having a first side for facing the sewer system (side with lips 22) and a second side opposite the first side for facing the repair assembly (fig. 1), the seal having a seal opening (opening that starts from the top as seen in the figures), and a lip 18 protruding from the seal base, the lip comprising a flexible material or a compressible material (col. 6, lines 8-16 and 54-56). Regarding the recitation “the lip being in a first state when no external force is exerted on the seal and the lip being in a second state when external force is exerted on the seal, such that pressure exerted on the seal by fluid flowing from outside or inside the sewer system reinforces the sealing during intended operational use of the seal”, Applicant should note that because Ooka et al. anticipates the claimed seal, its seal will also meet the recited functional language.
Regarding claim 2, see the figures.
Regarding claims 5 and 7, column 6, lines 17-18 and the figures.
Regarding claim 8, see figures 1 and 2.
Regarding claim 9, see lips 22.
Regarding claim 10, see figures 1 and 2. Because the lips are depicted as having the same angle, it follows that an angle of the second lip is no more than 25% different than the first angle.
Regarding claim 12, see figure 16.
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) 3, 4, and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ooka et al. in view of KR’462 (KR2020180002462).
Regarding claims 3 and 4, Ooka et al. discloses a seal as shown above. Although Ooka et al. does not explicitly disclose the seal base having an annular oval shape not being rotationally symmetric however, it is known to form such seal base in an annular oval shape not being rotationally symmetric as attested by KR’462, see figures 3 and 7. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have formed the seal base of the seal of Ooka et al in an annular oval shape not being rotationally symmetric, in light of the teachings of KR’462, as is known in the art.
Regarding claims 11 and 12, see figures 8B and 8A of KR’462 respectively.
Regarding claim 13, see figure 8B.
Regarding claim 14, see figures 8A and 8B of KR’462.
Regarding claim 15, see figure 8A of KR’462.
Claim(s) 6, as best understood by the examiner, is/are rejected under 35 U.S.C. 103 as being unpatentable over Ooka et al.
Ooka et al. discloses a seal as shown above. Although Ooka et al. does not specifically disclose the seal base defining a shape being an open curve in the shape of a spiral however, having the seal base define a shape being an open curve in the shape of a spiral is an obvious matter of design choice that will depend on the shape of the damage to be repaired.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ESSAMA OMGBA whose telephone number is (469)295-9278. The examiner can normally be reached Monday to Thursday from 10:00 AM to 6:00 PM.
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, Alford Kindred can be reached at 571-272-4037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746
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