DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The disclosure is objected to because of the following informalities: page 1, first paragraph, the status of 17/317,020 should be updated to include the U.S. Patent number.
Appropriate correction is required.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 3, wherein the leading cable attachment segment includes tapered gripping anchors. The specification (see pages 5 and 6) refers to a front segment 110; however, does not alternatively refer to it as “a leading cable attachment segment”. Furthermore, the specification fails to provide proper antecedent basis for “tapered gripping anchors”.
Drawings
The drawings are objected to because reference number should be provided for “tapered gripping anchors”. 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.
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, as to claim 8, “the wherein the cutter body is configured to abut a front portion of the segment cartridge, but is not fastened to the segment cartridge” and as to claim 9, “wherein the cutter body is configured to abut the front portion of the segment cartridge along a curved joint.”
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 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 3, 9 and 10 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.
As to claim 3, the recitation of “wherein the leading cable attachment segment includes tapered gripping anchors” is confusing, thus rendering the claims indefinite. As mentioned above, the specification fail to provide proper antecedent basis for such limitation.
As to claim 9, the recitation of “wherein the cutter body is configured to
abut a front portion of the segment cartridge, but is not fastened to the segment cartridge” is confusing, thus rendering the claim indefinite. Figures 10 and 11 show the segment cartridge 230 and cutter body 220; however, the segment cartridge 230 and cutter body 220 appear to be an integral member (see cross-section, figure 11). Thus, the cutter body and segment cartridge appears to be fastened or connected to each other.
As to claim 10, the recitation of “wherein the cutter body is configured to
abut the front portion of the segment cartridge along a curved joint” is confusing thus rendering the claim indefinite. Figures 10 and 11 show the segment cartridge 230 and cutter body 220; however, there appears to be no curved joint.
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 2-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-10 of U.S. Patent No. 12,146,600. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 12,146,600. Furthermore, as best understood, U.S. Patent No. 12,146,600 discloses the use of tapered segments.
Claims 2-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,022,250. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 11,022,250. Furthermore, as best understood, U.S. Patent No. 11,022,250 discloses the use of tapered segments.
Claims 2-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-19 of U.S. Patent No. 10,571,064. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 10,571,064. Furthermore, as best understood, U.S. Patent No. 10,571,064 discloses the use of tapered segments.
Claims 2-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 9,470,353. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 9,470,353. Furthermore, as best understood, U.S. Patent No. 9,470,353 discloses the use of tapered segments.
Claims 2-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 25-30 of U.S. Patent No. 8,596,918. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 8,596,918. Furthermore, as best understood, U.S. Patent No. 8,596,918 discloses the use of tapered segments.
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 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.
Claim(s) 2, 4, 5, and 7 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Luksch (US 5,076,731).
As to claim 2, Luksch discloses a pipe splitting assembly comprising:
an expander cone 2;
a splitter body 3 coupled in front of the expander cone, the splitter body including a cable passage in a front end of the splitter body, wherein the splitter body includes a threaded connection 11 at a front end to couple to a leading cable attachment segment 12, wherein the cable passage passes through the threaded connection 11; and
one or more splitter blades (4,5) located along a length of the splitter body and extending radially from the splitter body, the one or more splitter blades including cutting portions.
As to claim 4, Luksch discloses wherein the one or more splitter blades (4,5)
include removable blades (see col. 4, lines 42-44, “detachably”).
As to claim 5, Luksch discloses wherein the removable blades include
multiple blades (4,5).
As to claim 7, Luksch discloses further including a pneumatic hammer (i.e. impact ram, see col. 2, lines 18-19) coupled behind the expander cone.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDERICK L LAGMAN whose telephone number is (571)272-7043. The examiner can normally be reached Tuesday-Friday 8am-6:00pm.
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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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/FREDERICK L LAGMAN/Primary Examiner, Art Unit 3678