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 .
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,935,162. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 10,935,162 and are thus encompassed by said claims.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,346,464. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 11,346,464 and are thus encompassed by said claims.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,674,616. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 11,674,616 and are thus encompassed by said claims.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,140,250 in view of Preston et al. (5,653,554). US Patent No. 12,140,250 claims similar limitations to the current application with the exception of a deforming die. Preston discloses running a die through a pipe before removal of the pipe (5,653,554). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify U.S. Patent No. 12,140,250 to include a deforming die in order to pre-form the pipe as taught by Preston. Therefore, the claims 1-8 to the current application are not patently distinct from the claims of U.S. Patent No. 12,140,250.
Claims 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,140,250. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims to the current application are merely broader than the claims to US Patent No. 12,140,250 and are thus encompassed by said claims.
Claim Rejections - 35 USC § 103
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 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) 1-2 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedone (4,006,521) in view of Preston et al. (5,653,554).
With regard to claim 1, Pedone discloses a method of pipe extraction (abstract), comprising: coupling a puller (32) to a first end (21) of the pipe (via 25); coupling the puller to a second end (23) of the pipe (via 17) ; and pulling the pipe from the ground, applying an extraction force at both the first end and the second end of the pipe (fig. 1; col. 3, lines 11-48).
Pedone is silent regarding forcing a deforming die through a pipe to loosen the pipe from the surrounding soil.
Preston discloses method of pipe extraction wherein a deforming die through a pipe to loosen the pipe from the surrounding soil (col. 4, lines 53-55).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Pedone and utilize a deforming die as taught in Preston, with a reasonable expectation of success, in order to pre-form the pipe prior to removal.
With regard to claim 2, Pedone, as modified, further discloses pulling the deforming die through the pipe with a cable (Preston, col. 4, lines 53-55).
With regard to claim 8, Pedone further discloses pulling in a new pipe (12) as the old pipe is removed from the ground (abstract).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedone (4,006,521) in view of Preston et al. (5,653,554), as applied to claim 1 above, and further in view of Bergey (5,076,730).
With regard to claim 3, Pedone, as modified, discloses the invention substantially as claimed however is silent regarding pushing the deforming die through the pipe with a directional drill.
Bergey discloses pushing a deforming die (1) with a directional drill (col. 3, lines 38-49).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify Pedone and utilize a directional drive to drive the device as taught in Bergey, with a reasonable expectation of success, in order to further control the deforming die.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedone (4,006,521) in view of Preston et al. (5,653,554), as applied to claim 1 above, and further in view of Tjader (2007/0036613).
With regard to claims 5-6, Pedone, as modified, discloses the invention substantially as claimed however is silent regarding a die that includes one or more hardened inserts one or more bronze alloy inserts.
Tjader discloses a device for deforming pipes comprising hardened inserts (118).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify Pedone and utilize hardened inserts as taught in Tjader, with a reasonable expectation of success, in order to place further pressure on the pipe.
Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a bronze alloy, with a reasonable expectation of success, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedone (4,006,521) in view of Preston et al. (5,653,554), as applied to claim 1 above, and further in view of Dusette et al. (4,457,647).
With regard to claim 7, Pedone, as modified, discloses the invention substantially as claimed however is silent regarding lubricating and forcing the deforming die.
Dusette discloses a deforming die (20) that utilizes lubrication (col. 6, lines 1-15)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify Pedone and lubricate the die as taught in Dusetter, with a reasonable expectation of success, in order to reduce friction of the die.
Claim(s) 9 and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pedone (4,006,521) in view of Preston et al. (5,653,554) and Reynolds (4,148,445).
With regard to claim 9, Pedone discloses a method of pipe extraction (abstract), comprising: pulling a first end (21) and a second end (23) of the pipe concurrently to pull the pipe from the ground (fig. 1; col. 3, lines 11-48).
Pedone is silent regarding forcing a deforming die through a pipe to loosen the pipe from the surrounding soil and winding extracted pipe around a drum.
Preston discloses method of pipe extraction wherein a deforming die through a pipe to loosen the pipe from the surrounding soil (col. 4, lines 53-55).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Pedone and utilize a deforming die as taught in Preston, with a reasonable expectation of success, in order to pre-form the pipe prior to removal.
Reynolds discloses winding a retrieved pipe (P) around a drum (R).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Pedone and wind the pipe on a drum as taught in Reynolds, with a reasonable expectation of success, in order to efficiently store the extracted pipe.
With regard to claim 12, Pedone further discloses pulling a first end and a second end of the pipe includes pulling at least one cable (e.g. 32).
With regard to claim 13, Pedone further discloses pulling a first end and a second end of the pipe includes pulling two cables (e.g. 16/18) 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 (fig. 1).
With regard to claim 14, Pedone further discloses pulling in a new pipe (12) as the extracted pipe is removed from the ground (abstract).
With regard to claim 15, Pedone further discloses removing (“dispensing”) the extracted pipe from the drum.
With regard to claim 16, Pedone further discloses winding includes driving with a hydraulic motor (26).
Allowable Subject Matter
Claims 4 and 10-11 would be allowable if the double patenting rejection(s) set forth in this Office action is/are overcome.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art, either alone or in any reasonable combination, fails to teach or suggest all the limitations of the dependent claim(s). Methods of pipe extraction are known such as those taught by Pedone and Preston et al. as discussed above. However, the cited prior art lacks a deforming die that contains a deforming cylinder portion coupled between a leading end cylinder portion and a trailing end cylinder portion as well as the pulling force of on the first end being controlled separately from a pulling force on the second end as required by the dependent claim(s) and it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the prior art to achieve applicant’s invention without the benefit of hindsight and applicant’s own disclosure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
2/19/2026