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 .
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 7-12 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.
Regrading claim 7 “the inner pipe” of line 3 appears to lack proper antecedence. It appears “the inner pipe” should be “an inner pipe”.
Claim 7 further has a claim limitation in lines 5-6 that appears to be contradictory to the disclosure. The limitation “housing the inner pipe…. On an outer circumference in the outer pipe” is not per the drawings and disclosure. The drawings and disclosure has the inner pipe and the protection member located on the inner circumference of the outer pipe. Correction is required.
Regarding claims 8-12, they are rejected per dependency off of claim 7.
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)(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, 5, 7, and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipate by Nippon Telegraph and Telephone Corporation (WO 2022-074770).
Nippon discloses a buried pipe (1a) comprising an inner pipe (2) capable of housing a cable, a protection member (3) disposed on an outer circumference of the inner pipe, and an outer pipe (7) configured to house the protection member and the inner pipe, wherein the protection member has a higher strength (steel) than the inner pipe and the outer pipe as depicted in Figure 1 (see the second page of the translation, paragraph 5 last line).
Regarding claim 5, wherein a part of an outer circumference of the inner pipe has an area that is not covered by with the protection member. The protection member is diamond shaped and the points of the diamond are not in direct contact with the inner pipe, therefore the inner pipe is not covered.
Regarding the method claim 7, per the 112 rejection above it would appear the intent of the claim is to be reflective of the claim language in claim 1. The apparatus of claim 1 meets the method of claim 7 and hence claim 11 per the rejection of claim 5 above.
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) 2-4 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nippon.
Regarding claims 2 and 8, Nippon fails to disclose that the surface of the protection member is coated with a coating material.
It would be obvious to one at the time of filing that coating various elements that are installed together aids in the assembly process and further protects the member. Therefore the coating of the protection member would aid the members with a protective outer layer and also for sliding the various elements together.
In regards to claims 3 and 9, The inner and outer pipe materials are disclosed as being made of metal and the protection member being of a tougher material. The coating material would inherently being an insulating material since it is covering the protection member.
Therefore it would be obvious to make the protection material out of a conductive ceramic, since the protection member would be stronger that the pipe material and choosing a material for one of ordinary skill in the art is an obvious engineering choice based on an applications requirement.
Regarding claims 4 and 10, the coating material is an insulating resin or a rubber material is not disclosed.
It would have been obvious to a person having ordinary skill in the art before effective filing date of the claimed invention to have made the coating material out of an insulating resin or a rubber material since it has been held that selecting a particular known material is within the general skill of a worker in the art on the basis of its suitability for the intended as a material of obvious engineering choice use based upon particular application requirements.
Allowable Subject Matter
Claims 6 and 12 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG M SCHNEIDER whose telephone number is (571)272-3607. The examiner can normally be reached Monday-Friday 8am-5pm.
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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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/CRAIG M SCHNEIDER/ Supervisory Patent Examiner, Art Unit 3753
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