DETAILED ACTION
The present application has been made of the record and currently claims 1-4 and 6-20 are pending while claim 5 is cancelled.
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 .
Election/Restrictions
Applicant’s election without traverse of Species I, Fig. 1 in the reply filed on 2/25/2026 is acknowledged.
However, claims 6 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species II because Species I does not comprise a second steel pipe comprising a buckle-inducing deformation or a butt-welded pipe joint, there being no allowable generic or linking claim.
Therefore, claims 1, 7-13, and 15-20 are being considered, claims 2-4, 6, and 14 are withdrawn from consideration, and claim 5 is cancelled.
Information Disclosure Statement
On the IDS filed 12/30/2024, Foreign patent document GB-337463 has not been considered because a copy of the document has not been provided as required by 37 CFR 1.98(a)(2).
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 second end portion of the first pipe and the first end portion of the second pipe of claim 16 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
Claims 1 and 7-9 objected to because of the following informalities:
In claims 1 and 7-9, “butt-welded pipe joint” should be “pipe joint” as Species I is not directed to a “butt-welded pipe joint” (ex., see claim 20 which appears applicant intended to change “butt-welded pipe joint” to “pipe joint”).
Appropriate correction is required.
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 16-19 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.
In regards to claim 16, the limitations “the first pipe comprises a first end portion and a second end portion” and “the second pipe comprises a first end portion and a second end portion” are unclear to the examiner because claim 11 already positively recites end portions for the first and second pipe and claim 16 further adds two more addition end portions of each pipe to the claim (ex., is the claim further defining the end portion or positively adding more end portions).
To proceed with prosecution, the limitations “the first pipe comprises a first end portion and a second end portion” and “the second pipe comprises a first end portion and a second end portion” will be interpreted as “the end portion of the first pipe comprises a first end portion and a second end portion” and “the end portion of the second pipe comprises a first end portion and a second end portion”.
It is noted that the examiner is only interpreting the claims to proceed with prosecution but applicant is still required to amend the claims.
Claim Rejections - 35 USC § 103
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 7-13, 15, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mannesmann (DE-588746) in view of Petersen et al. (U.S. Patent No. 7,334,609).
In regards to claim 1, Mannesmann discloses:
A butt-welded pipe joint (see fig. 2 hereinafter; ex., “Abb. 2”), comprising:
a first pipe (a) comprising a first pipe end (see near a) and a first pipe wall thickness (it is inherent that the pipe has a pipe thickness);
a second pipe (c) comprising a second pipe end (see near c);
the first pipe end of the first steel pipe being welded (d) to the second pipe end of the second steel pipe at the butt-welded pipe joint;
the first steel pipe comprising an outwardly-extending, cold worked buckle-inducing deformation (f) that is spaced apart from a weld of the butt-welded pipe joint such that that the expansion beads (e, f) should be located at such a distance from the weld seam that they are not heated during welding (see paragraph 0010 of the translated document provided herein),
but does not disclose:
the first and second pipe is made of steel,
the deformation is spaced apart from the weld of the butt-welded pipe joint by 4 inches to 36 inches along the first steel pipe; and
wherein a crest height of the deformation is 50% to 500% of the first pipe wall thickness.
In regards to the steel material, Petersen discloses a similar corrugated pipe (see fig. 1 hereinafter) where it is known to use steel as the material for corrugated pipes (2:24-28).
It would have been obvious to one of ordinary skill in the art before the effective filling date to use a steel material for the first and second pipes of Mannesmann because Petersen discloses that it is known to use steel for flexible corrugated pipes (2:24-28) and it has been held that a selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
In regards to crest height, while Mannesmann in view of Petersen does not expressly disclose “a crest height of the deformation is 50% to 500% of the first pipe wall thickness”, the “crest height”, “wall thickness”, and “width of the corrugation” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Petersen discloses a similar corrugated pipe (see fig. 1) where it is known to design the convolution geometry by the convolution height (h), pitch (q), and wall thickness (2:13-14).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the crest height of the deformation to be 50% to 500% of the first pipe wall thickness, as the “crest height” and “pipe wall thickness” may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Petersen explicitly discloses it is known to design the convolution geometry by the convolution height (h), pitch (q), and wall thickness (2:13-14). See MPEP 2144.05(II)(A).
In regards to the deformation spacing, while Mannesmann in view of Petersen does not expressly disclose “the deformation is spaced apart from the weld of the butt-welded pipe joint by 4 inches to 36 inches along the first steel pipe”, the “deformation spacing” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Mannesmann explicitly discloses that the expansion beads (e, f) should be located at such a distance from the weld seam that they are not heated during welding (see paragraph 0010).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the device of Mannesmann in view of Petersen such that the deformation is spaced apart from the weld of the butt-welded pipe joint by 4 inches to 36 inches along the first steel pipe, as the “deformation spacing” may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable Mannesmann explicitly discloses that the distance of the deformations are a known parameter such that the deformations should be located at such a distance from the weld seam that they are not heated during welding (see paragraph 0010). See MPEP 2144.05(II)(A).
In regards to claim 7, Mannesmann further discloses:
The butt-welded pipe joint of claim 1, wherein the buckle-inducing deformation comprises an annular bulge (f) formed in an exterior surface of the first steel pipe (see fig. 2) and an annular recess (see fig. 2, where the bulge is comprised on an annular recess) formed in an interior surface of the first steel pipe at the location of the annular bulge (see fig. 2).
In regards to claim 8, Mannesmann in view of Petersen discloses:
The butt-welded pipe joint of claim 1,
but does not explicitly disclose:
wherein a length of the buckle-inducing deformation is 4 inches to 10 inches.
In regards to a length of the deformation, while Mannesmann in view of Petersen does not expressly disclose “a length of the buckle-inducing deformation is 4 inches to 10 inches”, the “length“ may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Petersen discloses a similar corrugated pipe (see fig. 1) where it is known to design the convolution geometry by the convolution height (h), pitch (q; ex., a length), and wall thickness (2:13-14).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the length of the buckle-inducing deformation is 4 inches to 10 inches, as the “length” may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Petersen explicitly discloses it is known to design the convolution geometry by the convolution height (h), pitch (q; ex., a length), and wall thickness (2:13-14). See MPEP 2144.05(II)(A).
In regards to claim 9, Mannesmann in view of Petersen further discloses:
The butt-welded pipe joint of claim 1, wherein the buckle-inducing deformation is axially spaced from the weld by 2 inches to 10 inches along the first steel pipe.
In regards to claim 10, Mannesmann in view of Petersen further discloses:
The butt-welded pipe joint of claim 1, wherein the crest height of the buckle-inducing deformation is from 50% to 300% of the first pipe wall thickness.
In regards to claim 11, Mannesmann discloses:
A pipe joint arrangement (see fig. 2 hereinafter; ex., “Abb. 2”), comprising:
a first pipe (a) comprising a main body having a first diameter (see fig. 2), an end portion (b), and a first pipe wall thickness (it is inherent that pipe has a thickness);
a second pipe (c) comprising an end portion (see near c);
the end portion of the first pipe being welded to the end portion of the second pipe (d) to form the pipe joint and to seal the pipe joint between the first pipe and the second pipe;
the first pipe comprising an outwardly-extending, buckle-inducing deformation (f) that is spaced apart from the pipe joint in an upstream direction such that that the expansion beads (e, f) should be located at such a distance from the weld seam that they are not heated during welding (see paragraph 0010 of the translated document provided herein),
wherein a contour of the buckle-inducing deformation is symmetric about a longitudinal axis of the first pipe (see fig. 2), and is curved from the buckle-inducing deformation to a regular exterior surface of the main body of the first pipe having the first diameter (see fig. 2); and
wherein the buckle-inducing deformation is configured to ensure that buckling occurs at the preselected location of the buckle-inducing deformation of the first pipe when the pipe joint is subjected to a geohazard event (structurally, there is nothing preventing this functional limitation),
but does not explicitly disclose:
wherein a crest height of the buckle-inducing deformation is 50% to 500% of the first pipe wall thickness.
In regards to crest height, while Mannesmann does not expressly disclose “a crest height of the deformation is 50% to 500% of the first pipe wall thickness”, the “crest height”, “wall thickness”, and “width of the corrugation” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Petersen discloses a similar corrugated pipe (see fig. 1) where it is known to design the convolution geometry by the convolution height (h), pitch (q), and wall thickness (2:13-14).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the crest height of the deformation of Mannesmann to be 50% to 500% of the first pipe wall thickness, as the “crest height” and “pipe wall thickness” may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Petersen explicitly discloses it is known to design the convolution geometry by the convolution height (h), pitch (q), and wall thickness (2:13-14). See MPEP 2144.05(II)(A).
In regards to claim 12, Mannesmann in view of Petersen discloses:
The pipe joint of claim 11,
but does not disclose:
wherein the buckle-inducing deformation is spaced apart from an upstream-most weld of the pipe joint by 2 inches to 10 inches.
In regards to the deformation spacing, while Mannesmann in view of Petersen does not expressly disclose “the buckle-inducing deformation is spaced apart from an upstream-most weld of the pipe joint by 2 inches to 10 inches”, the “deformation spacing” may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Mannesmann explicitly discloses that the expansion beads (e, f) should be located at such a distance from the weld seam that they are not heated during welding (see paragraph 0010).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the device of Mannesmann in view of Petersen such that the buckle-inducing deformation is spaced apart from an upstream-most weld of the pipe joint by 2 inches to 10 inches, as the “deformation spacing” may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable Mannesmann explicitly discloses that the distance of the deformations are a known parameter such that the deformations should be located at such a distance from the weld seam that they are not heated during welding (see paragraph 0010). See MPEP 2144.05(II)(A).
In regards to claim 13, Mannesmann in view of Petersen discloses:
The pipe joint of claim 12,
but does not disclose:
wherein a length dimension of the buckle- inducing deformation is 4 inches to 10 inches.
In regards to a length of the deformation, while Mannesmann in view of Petersen does not expressly disclose “a length of the buckle-inducing deformation is 4 inches to 10 inches”, the “length“ may be determined through the use of routine experimentation during the engineering design process to optimize the functionality of the device, suited to the intended use and desired parameters because Petersen discloses a similar corrugated pipe (see fig. 1) where it is known to design the convolution geometry by the convolution height (h), pitch (q; ex., a length), and wall thickness (2:13-14).
It would have been obvious to one having ordinary skill in the art at the time of invention to modify the length of the buckle-inducing deformation is 4 inches to 10 inches, as the “length” may be optimized to the desired operational parameters through the use of routine experimentation. A person of ordinary skill in the art undertaking such experimentation would have had a reasonable expectation of success and the results would have been predictable because Petersen explicitly discloses it is known to design the convolution geometry by the convolution height (h), pitch (q; ex., a length), and wall thickness (2:13-14). See MPEP 2144.05(II)(A).
In regards to claim 15, Mannesmann further discloses:
The pipe joint of claim 11, wherein the buckle-inducing deformation is cold worked (see note below).
It is noted that “cold worked” is a product-by-process limitation. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the patentability of the product that is to be determined and not recited process steps irrespective of whether or not only process steps are set forth.
In regards to claim 16, as best understood, Mannesmann further discloses:
The pipe joint of claim 11, wherein:
the “end portion of the” first pipe comprises a first end portion and a second end portion, and
the first end portion of the first pipe is configured as a pipe spigot end portion;
the “end portion of the” second pipe comprises a first end portion and a second end portion, and
the second end portion of the second pipe is configured as a pipe bell end portion;
the spigot end portion of the first pipe is received inside the pipe bell end portion of the second pipe (see fig. 2).
In regards to claim 20, Mannesmann in view of Petersen further discloses:
The pipe joint of claim 1, wherein the crest height of the buckle-inducing deformation is from 50% to 200% of the first pipe wall thickness (see rejection of claim 1 above).
Claim(s) 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mannesmann in view of Petersen as applied to claim 16 above and in further view of Plattsmier et al. (U.S. Patent No. 10,267,440).
In regards to claim 17, Mannesmann in view of Petersen discloses:
The pipe joint of claim 16,
but does not disclose:
wherein the pipe joint further comprises an internal fillet weld joining the pipe spigot end portion of the first pipe to an interior surface of the pipe bell end portion of the second pipe.
In regards to the internal fillet/interior surface, Plattsmier discloses a similar device (see fig. 4) where a bell pipe (112) comprises a first diameter portion (121), a transition portion (123), and a second diameter portion (122) comprising an internal fillet (131) which is known as a double-weld joint that is predominate in the industry but single-weld joints can also be used (5:44-55)
wherein the double-weld joint comprising the internal fillet spaced away from the transition portion and on the second diameter portion provides easier assembly and is more tolerant of variations in the axial alignment of adjacent pipe segments (5:56-60).
It would have been obvious to one of ordinary skill in the art before the effective filling date to modify the device of Mannesmann in view of Petersen such that the pipe joint further comprises an internal fillet weld spaced away from the transition section and joining the pipe spigot end portion of the first pipe to an interior surface of the pipe bell end portion of the second pipe because Plattsmier discloses that the double-weld joint comprising the internal fillet spaced away from the transition portion and on the second diameter portion provides easier assembly and is more tolerant of variations in the axial alignment of adjacent pipe segments (5:56-60).
In regards to claim 18, Mannesmann further discloses:
The pipe joint of claim 17, wherein the pipe joint further comprises an external fillet weld (d) joining the pipe bell end portion of the second pipe to an exterior surface of the first pipe.
In regards to claim 19, Mannesmann in view of Petersen and Plattsmier further discloses:
The pipe joint of claim 18, wherein the pipe bell end portion of the second pipe comprises a transition portion (ex., see near c in fig. 2 in Mannesmann) in which a diameter of the second pipe increases from a first diameter to a second diameter (see fig. 2) and
a second diameter portion (ex., to the right of c) having the second diameter and defining an opening of the pipe bell end portion (see fig. 2), and
the internal fillet weld is located in the second diameter portion of the second pipe and spaced apart from the transition portion of the second pipe in an upstream direction (ex., see the rejection of claim 11 above).
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.
Claim 1, 7-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 11, 15, 17, 18, 20, and 22-24 of U.S. Patent No. 12,215,817. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 7-13, and 15-20 are generic to all that is recited in claims 1-4, 11, 15, 17, 18, 20, and 22-24 of the reference patent. In other words, claims 1-4, 11, 15, 17, 18, 20, and 22-24 of the reference patent fully encompasses the subject matter of claims 1, 7-13, and 15-20. Thus, the invention of claims 1-4, 11, 15, 17, 18, 20, and 22-24 of the reference patent is in effect a “species” of the “generic” invention of claims 1, 7-13, and 15-20. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 7-13, and 15-20 are anticipated by claims 1-4, 11, 15, 17, 18, 20, and 22-24 of the reference patent, claims 1, 7-13, and 15-20 are not patentably distinct from claims 1-4, 11, 15, 17, 18, 20, and 22-24, regardless of any additional subject matter presented in claims 1-4, 11, 15, 17, 18, 20, and 22-24.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER TYLER RUFRANO whose telephone number is (571)272-6223. The examiner can normally be reached Mon - Fri 8:30AM to 4:30PM.
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/A.T.R./Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
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