DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants’ Amendment, filed 1/2/2026, has been entered. Claims 1, 4-12, and 14-21 are pending with claims 2-3 and 13 being currently cancelled and claims 20-21 being currently added.
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 tapered thread of claim 18 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 lance sleeve being mounted on a lance of a hydrovac truck 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.
Specification
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.
Claims 20 and 21 recite that the sleeve is mounted on a lance of a hydrovac truck. The examiner cannot find any support for these recitations in the specification or in the drawings.
Claim 21 recites that the lance-receiving inner surface extends from and is in coaxial alignment with the female connector to reinforce the lance at the female connector to reduce side or bending loads at the female connector. The examiner cannot find any support for these recitations in the specification or in the drawings.
Claim Objections
Claim 4 is objected to because of the following informalities: it appears that claim 4 should depend from claim 1 and not cancelled claim 3.
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 20-21 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.
Claims 20 and 21 recite that the sleeve is mounted on a lance of a hydrovac truck. The specification and drawings provide no support for these limitations.
Claim 21 recites that the lance-receiving inner surface extends from and is in coaxial alignment with the female connector to reinforce the lance at the female connector to reduce side or bending loads at the female connector. The examiner cannot find any support for this limitation in the specification or in the drawings.
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 18 and 20-21 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 18 recites that the female connector of the sleeve and the male connector of the lance are tapered. This recitation is unclear and therefore indefinite when read in conjunction to claim 11. Claim 11 appears to claim a straight thread profile (i.e. “the lance comprises a first lance end having a male connector and the lance having an external surface having an outer diameter; and the female connector of the second sleeve end is connected to the male connector of the first lance end, and the outer diameter of the external surface matching the inner-surface internal diameter of the lance inner receiving surface”).
Claims 20 and 21 recite that the sleeve is mounted on a lance of a hydrovac truck. These claims are indefinite as the metes and bounds of the claims cannot be ascertained. The specification and drawings provide no support for these limitations. Therefore, it is not clear whether or not a hydrovac truck or a hydrovac truck lance is required.
Claim 21 recites that the lance-receiving inner surface extends from and is in coaxial alignment with the female connector to reinforce the lance at the female connector to reduce side or bending loads at the female connector. This claim is indefinite as the metes and bounds of the claim cannot be ascertained. The examiner cannot find any support for this limitation in the specification or in the drawings. Therefore, it is not clear whether the female connector is reinforced when connected to a hydrovac truck.
It should be noted that although claim 18 does not have an art rejection, claim 18 is not deemed allowable. Tapered threads are very well known in the art.
It should further be noted that there are no art rejections being made regarding claims 20 and 21. However, this is not an indication of allowable subject matter as it appears that the limitations of claims 20-21 are unsupported. Should the examiner be in error, it should be noted that lances and sleeves connected to hydrovacs are well known in the art (see for instance paragraphs [0002]-[0005] of the instant specification).
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.
Claims 1, 4, 7-8, 11-12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kelzer (US 20040057811).
Regarding claim 1: Kelzer discloses a lance sleeve 10 (Fig. 1; [0013]). Kelzer discloses the sleeve comprising a first sleeve end 12 having a male connector 11 (Fig. 1; [0013]). Kelzer discloses a second sleeve end 14 comprising a female connector 40, 42 and a collar (unnumbered) extending beyond the female connector in a direction opposite from the first sleeve end and forming a lance receiving inner surface, the lance receiving inner surface having an inner-surface internal diameter (Fig. 1; [0013]). Kelzer discloses the female connector having a maximum female-connector internal diameter and in which the inner-surface internal diameter matches the maximum female-connector internal diameter (Fig. 1). Kelzer discloses that the lance receiving inner surface extends from and is in coaxial alignment with the female connector (Fig. 1). Kelzer discloses that the lance receiving inner surface has an axial length that is greater than 1" (Fig. 1; [0016], [0024]).
Regarding claim 4: Kelzer discloses that the axial length of the lance receiving inner surface is greater than 2" (Fig. 1; [0024]).
Regarding claim 7: Kelzer discloses that the female NPT connection is between 1/4" and 1" NPT (Figs. 1, 3; [0024]).
Regarding claim 8: Kelzer discloses that the male NPT connection is between 1/4" and 1" NPT (Figs. 1, 3; [0024]).
Regarding claim 11: Kelzer discloses a lance sleeve 10 in combination with a lance (Fig. 1; [0013], [0016]). Kelzer discloses a first sleeve end 12 having a male connector 11 and a second sleeve end 14 comprising a female connector 40, 42 and a collar (unnumbered) extending beyond the female connector in a direction opposite from the first sleeve end and forming a lance receiving inner surface having an inner surface internal diameter (Fig. 1; [0013]). Kelzer discloses the lance comprises a first lance end having a male connector and the lance having an external surface having an outer diameter (Fig. 1; [0013], [0016]; although Kelzer does not illustrate a lance, Kelzer discloses such [0016}; further the lance would have a male end as it mates with a female end). Kelzer discloses the female connector of the second sleeve end is connected to the male connector of the first lance end, and the outer diameter of the external surface matching the inner-surface internal diameter of the lance inner receiving surface (Fig. 1). Kelzer discloses that the lance receiving inner surface extends from and is in coaxial alignment with the female connector (Fig. 1). Kelzer discloses that the lance receiving inner surface has an axial length that is greater than 1" (Fig. 1; [0016], [0024]).
Regarding claim 12: Kelzer discloses that the female connector of the second sleeve end has a maximum female connector internal diameter, and in which the inner surface internal diameter matches the maximum female connector internal diameter (Fig. 1).
Regarding claim 14: Kelzer discloses that the axial length of the lance-receiving inner surface is greater than 2" (Fig. 1; [0024]).
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 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 of this title, 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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kelzer (US 20040057811) in view of Leblanc et al. (US 20100044113).
Kelzer discloses the invention substantially as claimed and as discussed above.
Regarding claim 5: Kelzer is silent regarding specific type of threads and does not explicitly disclose that the female connector is a female NPT ("National Pipe Thread") connection. Leblanc discloses that a female connector can be a female NPT ("National Pipe Thread") connection ([0029]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Kelzer so that the female connector is a female NPT ("National Pipe Thread") connection as taught by Leblanc. As both Kelzer and Leblanc teach a threaded coupling have a female connection, as NPT threads are very well known in the art, and as Leblanc explicitly discloses that a female connector can be a female NPT ("National Pipe Thread") connection, it would have been within routine skill to have selected a specific thread type from a finite selection of thread types. Such a simple addition/substitution and configuration would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 6: Kelzer, as modified by Leblanc, discloses that the male connector is a male NPT ("National Pipe Thread") connection (Leblanc – [0029]).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kelzer (US 20040057811) in view of Vogel et al. (US 20080224471).
Kelzer discloses the invention substantially as claimed and as discussed above.
Regarding claim 9 : Kelzer is silent regarding specific material types and does not explicitly disclose that the sleeve is made of a material with a higher yield strength than aluminum. Vogel discloses that a sleeve can be made of a material with a higher yield strength than aluminum ([0019]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Kelzer so that the sleeve is made of a material with a higher yield strength than aluminum as taught by Vogel. As both Kelzer and Vogel teach coupling sleeves, as coupling sleeves are known to be formed of a material with a higher yield strength than aluminum (i.e. various steels), and as Vogel explicitly discloses that a sleeve can be made of a material with a higher yield strength than aluminum, it would have been within routine skill to have selected a specific material type from a finite selection of material types. Such a simple addition/substitution and configuration would have been predictable with a reasonable expectation for success and with no unexpected results.
Regarding claim 10: Kelzer, as modified by Vogel, discloses that the sleeve is made of stainless steel (Vogel – [0019]).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kelzer (US 20040057811) in view of Vogel et al. (US 20080224471) and in view of Meschke (US 20240254724).
Kelzer and Vogel disclose the invention substantially as claimed and as discussed above.
Regarding claims 15 and 16: As discussed above Kelzer, as modified by Vogel, discloses that the sleeve is made of the sleeve is made from a material having a higher yield strength than the aluminum. (Vogel – [0019]). Kelzer, as modified by Vogel, is silent regarding the material of the lance. Meschke discloses that the lance 122 can be made of material such as fiberglass, plastics, rubbers, polymers, lined or coated material, aluminum, and so on ([0027]). Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Kelzer, as modified by Vogel, so that the lance is made of material such as fiberglass, plastics, rubbers, polymers, lined or coated material, aluminum, and so on sleeve as taught by Meschke and as such the sleeve would be made from a material having a higher yield strength (see Vogel above). As Kelzer and Vogel teach coupling sleeves, as Meschke teaches various materials for a lance that have a lower yield strength than the Vogel sleeve, as coupling sleeves are known to be formed of a material with a higher yield strength than aluminum (i.e. various steels), and as Meschke explicitly teaches lance materials which would have a lower yield strength than the Vogel sleeve, it would have been within routine skill to have selected a specific lance material type from a finite selection of lance material types. Such a simple addition/substitution and configuration would have been predictable with a reasonable expectation for success and with no unexpected results. Further, the sleeve (Kelzer, as modified by Vogel) would then have a higher yield strength than the lance.
Regarding claim 17: Kelzer, as modified by Vogel and Meschke, discloses that the sleeve is made of stainless steel (Vogel – [0019]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kelzer (US 20040057811), alone.
Kelzer discloses the invention substantially as claimed and as discussed above.
Regarding claim 19: Kelzer does not explicitly disclose that the lance further comprises a second lance end having a further male connector, that the further male connector of the lance is connected to a female connector of a second sleeve, and the second sleeve having the same features of the sleeve of the lance sleeve in combination with the lance claimed in claim 11. Before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art and the benefit of the cited art to have configured Kelzer so as to include the lance further comprising a second lance end having a further male connector, that the further male connector of the lance is connected to a female connector of a second sleeve, and the second sleeve having the same features of the sleeve of the lance sleeve in combination with the lance claimed in claim 11.As Kelzer discloses the lance and lance sleeve of claim 11 (see above) and as duplication of parts is very well known in the art, it would have been within routine skill to have configured Kelzer to have a second male lance end and a second sleeve. Such a simple addition and configuration would have been predictable with a reasonable expectation for success and with no unexpected results. Further, it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Still further, it has been held that constructing a formerly integral structure in various elements (i.e. having a second lance end and a second lance sleeve) involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Response to Arguments
Applicants’ amendments and arguments, filed 1/2/2026, with respect to the previous rejections of claims 1-19 have been fully considered and they are at least partially persuasive. The objections/rejections that have been withdrawn are not repeated herein.
Applicants argue that Kelzer does not disclose or suggest a feature in which the lance-receiving inner surface has an extended axial length because the length L3 in Fig. 1 and described in paragraph [0024] which is greater than 1" includes the length of the female connector. Applicants assert that based on the measurements provided in paragraph [0024], the length of the lance receiving inner surface appears to be approximately 0.8".
The examiner disagrees with applicants’ analysis and conclusion. When reading Kelzer, in its entirety (particularly paragraphs [0015]-[0016], [0024], [0025]), it can be seen that Kelzer proposes many combinations of threaded and unthreaded regions and thus is found to disclose the claims as recited.
Applicants assert that the feature of the lance-receiving inner surface having an axial length that is greater than 1" enables the collar, when mounted on a lance of a hydrovac system, to engage the shaft of the lance to redistribute forces applied between the lance sleeve and the lance at a position at a distance greater than 1" axially away from the female connector and that this additional length reduces the application of a side or bending load on the connector of the lance with the collar, strengthening the lance at a location prone to breakage. Although the examiner sees the merit of this argument/assertion, applicants are reminded that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, it should be noted that the specification does not appear to disclose the specific assertion being presented hereinabove (see the drawing, specification, and 112 objections/rejections above).
Regarding the rejections of the remaining dependent claims. Applicants merely argue that the second or third reference does not disclose what is already disclosed by Kelzer. It should be noted that Leblanc, Vogel, and Meschke were not cited to disclose what limitations disclosed by Kelzer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARAS P BEMKO whose telephone number is (571)270-1830. The examiner can normally be reached on Monday-Friday 8:00-5:00 (EDT/EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached on 571-272-5405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Taras P Bemko/
Primary Examiner, Art Unit 3672
1/21/2026