DETAILED ACTION
Claim(s) 1-18 as filed 10/11/2024 are pending for consideration.
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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 13, 14, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 1, 1, 1, 1, 2, 3, 4, 1, 2, 3, and 4, respectively of U.S. Patent No. 11,774,008. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the parent patent recite all of the features of the claim of the instant application, including an annular ring body having an inside surface and an outside surface, a planar top surface opposite a planar bottom surface, and a cross section having a thickness defined from the planar top surface to the planar bottom surface, the thickness constant about the annular ring body.
With respect to claims 2-4, the recited dimensions are an obvious engineering design choice of the riser ring of the parent patent. With respect to claims 5 and 6, the riser ring of the parent patent is “configured” to be used in the recited manner. With respect to claims 7-10 and 13-16, the use of a slab is an obvious modification in view of the recited floor of the parent patent.
Claims 1, 2, 3, 4, 5, 6, 13, 14, 15, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 9, 5, 6, 12, 13, 14, 13, and 13, respectively of U.S. Patent No. 12,146,597. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the parent patent recite all of the features of the claims of the instant application, including an annular ring body having an inside surface and an outside surface, a planar top surface opposite a planar bottom surface, and a cross section having a thickness defined from the planar top surface to the planar bottom surface, the thickness constant about the annular ring body. With respect to claims 13-17, the use of a slab is an obvious modification in view of the recited floor of the parent patent.
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 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, 5, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schuermann (US Patent 1,080,520).
Regarding Claim 1, Schuermann discloses an annular ring body 20 configured as a riser ring for servicing a riser stack (ring 20 is capable of use as a riser ring for servicing a riser stack; it is noted that the recitation of a “riser stack” is provided as an intended use of the claimed annular ring body), and configured to be left embedded in a finished slab or to be removed prior to a slab being finished (the ring 20 is capable of being embedded in a finished slab or removed prior to a slab being finished), the annular ring body comprising: an inside surface (the inside surface being the surface facing radially inward) opposite an outside surface (the outside surface being the surface facing radially outward); a planar top surface (the rightwardly facing surface of 20 as shown in Figures 1-3; it is noted that the radially inward bulge shown in Figure 2 is created by the clamping of elements 16 and 21; Schuermann discloses the ring is formed from a length of tube on page 2, lines 106-110 and therefore includes opposite planar surfaces at the axial ends of the ring) opposite a planar bottom surface (the leftwardly facing surface of 20 as shown in Figures 1-3); and a cross section having a thickness defined from the planar top surface to the planar bottom surface (cross section as taken in Figure 2) and a width defined from the inside surface to the outside surface (the width as shown in Figures 1-3), the thickness constant about the annular ring body (best shown in Figure 3).
Regarding Claim 5, Schuermann is seen as further disclosing the annular ring body 20 is configured to be left embedded in gypcrete, grout, mud base, or concrete or to be removed prior to the slab being finished (the ring body 20 is capable of being embedded in gypcrete, grout, mud base, or concrete or to be removed prior to the slab being finished; it is noted that these limitations further define the intended use of claimed ring body).
Regarding Claim 6, Schuermann is seen as further disclosing the annular ring body 20 is configured to be left embedded in gypcrete beneath a tile layer or to be removed prior to the slab being tiled (the ring body 20 is capable of being embedded in gypcrete beneath a tile layer or to be removed prior to the slab being tiled; it is noted that these limitations further define the intended use of claimed ring body).
Claim(s) 13, 14, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kipp (US Patent 9,982,803).
Regarding Claim 13, Kipp discloses a method of servicing a riser stack (the device may be used with pipes, such as drain pipes as described in col. 3, lines 7-13, extending through a floor of a structure as described in col. 3, lines 14-20), the method comprising: a) providing an annular ring body (flange portion 42 as shown in Figures 10 and 11 forms an annular ring body) as a riser ring, the annular ring body configured to be left embedded in a finished slab or to be removed prior to a slab being finished (ring 42 is at least configured to be removed prior to a slab being finished; it is noted that the recitation of “or” only requires one of the recited limitations; it is further noted that it is possible for the ring body to be embedded in a finished slab); b) extending a riser pipe segment 24 through an opening in the slab 56 (as shown in Figure 11), the riser pipe segment 24 defining a length and having an external surface (the pipe segment 24 inherently includes a length and includes an external surface shown at 24 in Figure 11); c) sliding the riser ring 42 over the external surface of the riser pipe segment 24 (this is achieved as the pipe is inserted through the ring device 42; i.e. the riser ring slides over the external surface of the riser pipe as the riser pipe is being inserted through the device 42) to a position along the length of the riser pipe segment (e.g. the position shown in Figure 11), such that the riser ring and the riser pipe segment are engaged via a friction fit (gripping device 40 includes fingers 48 to create a friction hold on the pipe); and d) placing the riser ring 42 with the engaged riser pipe segment 24 onto the slab 56 (as shown in Figure 11, the riser ring 42 with the engaged riser pipe segment 24 is clearly placed on the slab 56 after formation of the slab) such that the riser pipe segment 24 is prevented from falling through the opening by the riser ring (via the friction fit as described above).
Regarding Claim 14, Kipp further discloses adjusting, from below the slab (col. 6, lines 18-24), while the riser ring remains in contact with the slab 56, an extent the riser piper segment extends through the opening (by forcing the piping upwardly).
Regarding Claim 16, Kipp is seen as further disclosing finishing the slab 56 (for the purpose of this claim, the slab 56 is seen to be “finished” at least because the concrete has cured as shown in Figure 11) around the riser ring 42 such that the riser ring is embedded in the finished slab (as shown in Figure 11).
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.
Claims 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schuermann (US Patent 1,080,520).
Regarding Claim 2, Schuermann does not disclose the particular dimensions of the ring 20 and therefore does not disclose the thickness is between about 1/2 inches to about 5/8 inches.
However, the selection of the thickness of the ring body is seen to be an obvious matter of engineering design choice to fit particular sizes of the flange and collar of Schuermann.
Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Schuermann such that the ring body is any desired thickness, including a thickness between about 1/2 inches to about 5/8 inches, for the purpose of providing a thickness which sufficiently fits within the flange and collar and engages the pipe as desired by Schuermann.
Regarding Claim 3, Schuermann does not disclose the particular dimensions of the ring 20 and therefore does not disclose the width is between about 1/4 inches to about 5/8 inches.
However, the selection of the width of the ring body is seen to be an obvious matter of engineering design choice to fit particular sizes of the flange and collar of Schuermann.
Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Schuermann such that the ring body is any desired width, including a width between about 1/4 inches to about 5/8 inches, for the purpose of providing a width which sufficiently fits within the flange and collar and engages the pipe as desired by Schuermann.
Regarding Claim 4, Schuermann does not disclose the particular dimensions of the ring 20 and therefore does not disclose the thickness is between about 1/2 inches to about 5/8 inches, and wherein the width is between about 1/4 inches to about 5/8 inches.
However, the selection of the thickness and width of the ring body is seen to be an obvious matter of engineering design choice to fit particular sizes of the flange and collar of Schuermann.
Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Schuermann such that the ring body is any desired thickness and width, including a thickness between about 1/2 inches to about 5/8 inches and a width between about 1/4 inches to about 5/8 inches, for the purpose of providing a thickness and width which sufficiently fits within the flange and collar and engages the pipe as desired by Schuermann.
Claim 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipp (US Patent 9,982,803).
Regarding Claim 15, Kipp further discloses the pipe may be pushed or pulled through the device (col. 7, lines 35-39) while the device remains in contact with the floor (i.e. after the flange is mounted or the interference fit is achieved). Kipp does not specifically disclose adjusting, from above the slab, while the riser ring remains in contact with the slab, an extent the riser piper segment extends through the opening.
However, because the pipe is capable of being retained when either pushed or pulled through the device, it is possible to adjust the pipe position from either below the slab or above the slab. Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the method of Kipp such that a user is above the slab when adjusting the pipe for the purpose of eliminating the need for a user to move locations before adjusting the pipe.
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipp (US Patent 9,982,803) in view of McMahon (US Patent 6,061,990).
Regarding Claim 17, Kipp does not specifically disclose assembling the riser stack such that the friction fit no longer holds the weight of the riser pipe segment.
McMahon teaches a method of passing a conduit through a slab of concrete (abstract) and further teaches removing a positioning device after the concrete has cured (col. 3, lines 2-8).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the method of Kipp such that the riser ring is removed after the concrete has cured as taught by McMahon for the purpose of allowing a user to reuse the ring to thereby save resources. It is noted that removing the ring of Kipp as taught by McMahon necessarily means that the friction fit (between the riser ring and riser pipe segment) no longer holds the weight of the riser pipe segment.
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kipp (US Patent 9,982,803) in view of McMahon (US Patent 6,061,990) as applied to claim 17 above, and further in view of Zinn (US Patent 2,679,155).
Regarding Claim 18, Kipp in view of McMahon is seen as further disclosing removing the riser ring (as taught by McMahon as described above), after assembling the riser stack (after inserting the conduit as taught by McMahon; i.e. after inserting conduit 19).
Kipp in view of McMahon does not specifically disclosure a further step, after removing the riser ring, of finishing the slab.
Zinn teaches a pipe installation method and further teaches a step of finishing a concrete layer C with tile T after a cover 14 is removed.
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the method of Kipp in view of McMahon such that the slab includes a final finishing step of tiling the slab after the ring is removed as taught by Zinn for the purpose of adding a decorative flooring layer to the concrete slab.
Allowable Subject Matter
Claims 7-10 would be allowable if rewritten to overcome the double patenting rejection(s) set forth in this Office action (or with a timely filed terminal disclaimer as described above) and to include all of the limitations of the base claim and any intervening claims.
Claims 11 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Anderson (US Patent 10,393,290) teaches a pipe clamp. Walraven et al. (US Patent 8,746,632) teaches a riser clamp.
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/KEVIN F MURPHY/Primary Examiner, Art Unit 3753