DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/569,593, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application is related to a pipe replacement system that pulls a cable and a pipe breaking tool through a pipe and that includes a splitter to cut the pipe as the cable is pulled over a plurality of guide pulleys. The claimed invention is an unrelated method of pipe extraction that forces a deforming die through a pipe, pulls the pipe from the ground, and winds the extracted pipe around a drum. Accordingly, claims 1-16 are not entitled to the benefit of the prior application.
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 deforming die, puller, first cable, second cable, directional drill, new pipe, drum and hydraulic motor 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 Objections
Claim 9 is objected to because of the following informalities: “and” should be added to the end of line 5. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: “of on” should be changed to “on” in line 1. Appropriate correction is required.
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 1-16 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. None of the subject matter of claims 1-16 is disclosed in the specification or the drawings. The claims and the specification do not appear to be related to the same invention. Thus, it is not clear that the inventor had possession of the claimed invention at the time the application was filed.
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 1-16 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 1 recites the limitation “the ground” in line 6. There is insufficient antecedent basis for this limitation in the claim. It is also unclear whether “the ground” is the same as or different than the soil recited in lines 2-3. For purposes of examination, the examiner interprets “the ground” to mean “the soil”. Claims 2-8 are rejected for depending from a rejected claim.
Claim 8 recites the limitation “the old pipe” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation “the ground” in line 5. There is insufficient antecedent basis for this limitation in the claim. It is also unclear whether “the ground” is the same as or different than the soil recited in lines 2-3. For purposes of examination, the examiner interprets “the ground” to mean “the soil”. Further, it is unclear whether “extracted pipe” in line 6 is the same as or different than, and in addition to, “a pipe” in line 2 because of the double positive recitation of “pipe”. For purposes of examination, the examiner interprets “extracted pipe” to mean “the extracted pipe”. Claims 10-16 are rejected for depending from a rejected claim.
Regarding claim 13, the wording of “pulling a first end and a second end of the pipe includes pulling two cables concurrently, wherein a first cable is coupled to the first end of the pipe, and a second cable is coupled to the second end of the pipe” in lines 1-3 is confusing. It is unclear whether “two cables” include or are different than, and in addition to, “at least one cable” in claim 12 because of the double positive recitation of “cable”. It is unclear whether “a first cable” and “a second cable” are the same as or different than, and in addition to, “two cables” because of the double positive recitation of “cable”. For purposes of examination, the examiner interprets “pulling a first end and a second end of the pipe includes pulling two cables concurrently, wherein a first cable is coupled to the first end of the pipe, and a second cable is coupled to the second end of the pipe” to mean “pulling at least one cable includes pulling a first cable and a second cable concurrently, wherein the first cable is coupled to the first end of the pipe, and the second cable is coupled to the second end of the pipe”.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-16 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-16 of copending Application No. 18/914,962 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-16 (as best understood) are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Olander (US 2019/0323628).
Regarding claim 1, Olander discloses a method of pipe extraction (e.g. claim 1), comprising: forcing a deforming die (e.g. 401) through a pipe (e.g. 102/462) to loosen the pipe from the surrounding soil (e.g. 461, Fig. 4D, claim 2); coupling a puller (e.g. 200) to a first end of the pipe (e.g. 106 is coupled to 200 via 122, Fig.’s 1B and 2A, claim 1); coupling the puller to a second end of the pipe (e.g. 104 is coupled to 200 via 112, Fig.’s 1B and 2A, claim 1); and pulling the loosened pipe from the ground, applying an extraction force at both the first end and the second end of the pipe (e.g. claim 1, paragraph 0028).
Regarding claim 2, Olander further discloses that forcing a deforming die through a pipe includes pulling the deforming die through the pipe with a cable (e.g. 414, Fig. 4A, paragraph 0042).
Regarding claim 3, Olander further discloses that forcing a deforming die through a pipe includes pushing the deforming die through the pipe with a directional drill (e.g. 428, Fig. 4B, paragraph 0050).
Regarding claim 4, Olander further discloses that forcing a deforming die through a pipe includes forcing a die that includes a deforming cylinder portion (e.g. 406) coupled between a leading end cylinder portion (e.g. 402) and a trailing end cylinder portion (e.g. 404, Fig. 4A, paragraph 0046).
Regarding claim 5, Olander further discloses that forcing a deforming die through a pipe includes forcing a die that includes one or more hardened inserts (e.g. paragraph 0048).
Regarding claim 6, Olander further discloses that forcing a deforming die through a pipe includes forcing a die that includes one or more bronze alloy inserts (e.g. paragraph 0049).
Regarding claim 7, Olander further discloses that forcing a deforming die through a pipe includes lubricating and forcing the deforming die (e.g. paragraph 0049).
Regarding claim 8, Olander further discloses pulling in a new pipe as the old pipe is removed from the ground (e.g. claim 7).
Regarding claim 9, Olander discloses a method of pipe extraction (e.g. claim 1), comprising: forcing a deforming die (e.g. 401) through a pipe (e.g. 102/462) to loosen the pipe from the surrounding soil (e.g. 461, Fig. 4D, claim 2); pulling a first end (e.g. 106, Fig. 1B) and a second end (e.g. 104, Fig. 1B) of the pipe concurrently to pull the pipe from the ground (e.g. claim 1); and winding extracted pipe around a drum (e.g. 210/220, Fig. 2A, paragraph 0036).
Regarding claim 10, Olander further discloses that a pulling force on the first end is controlled separately from a pulling force on the second end (e.g. paragraph 0032).
Regarding claim 11, Olander further discloses adjusting a force differential between the first end and the second end (e.g. claim 3).
Regarding claim 12, Olander further discloses that pulling a first end and a second end of the pipe includes pulling at least one cable (e.g. 112/122, Fig. 1B, claim 1).
Regarding claim 13, Olander further discloses that pulling a first end and a second end of the pipe includes pulling two cables concurrently (e.g. claim 1), wherein a first cable is coupled to the first end of the pipe (e.g. 122, Fig. 1B), and a second cable is coupled to the second end of the pipe (e.g. 112, Fig. 1B).
Regarding claim 14, Olander further discloses pulling in a new pipe as the extracted pipe is removed from the ground (e.g. claim 7).
Regarding claim 15, Olander further discloses removing the extracted pipe from the drum (e.g. paragraph 0036).
Regarding claim 16, Olander further discloses that winding includes driving with a hydraulic motor (e.g. paragraph 0033).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STACY N LAWSON whose telephone number is (571)270-7515. The examiner can normally be reached Mon-Fri 9am-3pm.
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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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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678
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