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 .
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 status of the claims for this application is as follows.
Claims 1-16 are currently pending.
Claims 15 and 16 are newly added.
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 12 and 13 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 12 recites “wherein the pipe fitting is used in a connection between the pipe and the pipe fitting”. The claim language is unclear as to how the pipe fitting is part of a connection where the connection contains the pipe fitting and then the connection is positioned between a pipe and itself. How is the connection, which uses the pipe fitting between a pipe and itself?
The claims have been rejected as best understood.
Claim Rejections - 35 USC § 102
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) 1-3, 7, and 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Graffy (US 3545793).
At the outset the applicant is reminded that:
1. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
2. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
PNG
media_image1.png
716
724
media_image1.png
Greyscale
Re Clm 1: Graffy discloses a pipe fitting (see Figs 1-5 and 7 and the Fig. above) comprising:
a socket (the socket of 30), wherein the socket is configured to receive and hold a pipe end section belonging to a pipe (Graffy is made to or capable of such) and
a cutting ring (33) and to at least partially receive
a counter bearing (11),
wherein the pipe fitting is designed such that the counter bearing and the cutting ring are pushed onto the pipe (Graffy is made to or capable of such),
wherein the cutting ring has a first end (1001) and a second end (2001), wherein the first end is arranged closer to a pipe end of the pipe than the second end in the working position (Graffy is made to or capable of such),
wherein at least two cutting edges (1003 and 2003) are arranged inside the cutting ring (see above),
wherein the first cutting edge (1003) is arranged closer to the first end than the second cutting edge (Graffy is made to or capable of such),
wherein an outer surface of the cutting ring comprises includes at least a first external cone (at 1002) and a second external cone (at 2002), wherein the first external cone is arranged closer to the first end (Graffy is made to or capable of such), wherein the first external cone is arranged closer to the pipe end in the working position than the second external cone (Graffy is made to or capable of such), wherein, furthermore, the first external cone forms a smaller angle with a longitudinal centerline of the cutting ring than the second external cone (see above),
wherein an inner surface of the socket includes at least a first internal cone (at 1002) and a second internal cone (at 2002), wherein the first internal cone forms a smaller angle with a longitudinal centerline of the socket than the second internal cone (see above),
wherein the first internal cone is configured to engage operatively with the first external cone in the working position (see above), and wherein the second internal cone is configured to engage operatively with the second external cone in the working position (see above),
wherein the working position is produced by the counter bearing moving the cutting ring into the socket (see above), wherein the cones are dimensioned and configured in such a way that during the production of the working position, first the first cutting edge and then the second cutting edge cuts into a surface of the pipe end section (the cones are made to or capable of having the first cutting edge and then the second cutting edge cuts into a surface of a pipe end section; note that the claim is directed towards a pipe fitting and not the combination of the pipe fitting and the pipe and that the pipe itself is not a positively recited element of the claim).
Re Clm 2: Graffy discloses wherein the socket has an internal thread which corresponds to an external thread of the counter bearing (see above).
Re Clm 3: Graffy discloses a wherein the pipe fitting comprises the socket, the cutting ring and the counter bearing as separately manufactured components (they are separate structures).
The recitation “separately manufactured components” is a process which can be used to make the product claimed. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art was made by a different process”. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 946, 966 (Fed. Cir. 1985).
Re Clm 7: Graffy discloses characterized by exactly one single-piece component in the form of the cutting ring which, in the working position, cuts into the pipe (see above).
Re Clm 9: Graffy discloses wherein the socket further comprises a device for connection to further components of a piping system (see the other end of 11).
Re Clm 10: Graffy discloses wherein the first external cone is assigned to the first cutting edge, and the second external cone is assigned to the second cutting edge (see above).
Re Clm 11: Graffy discloses wherein the inner cones engage operatively directly with the outer cones in the working position (see above).
Re Clm 12: Graffy discloses wherein the pipe fitting is used in a connection between the pipe and the pipe fitting (see all Figs.).
Re Clm 13: Graffy discloses wherein the pipe fitting provided passage of fluids at a pressure of up to 2650 bar (the pipe fitting is provided with a passage for fluids at a pressure of up to 2650 bar, and note that the pipe fitting of Graffy has all the claimed structure and is thus made to or is capable of providing passage of fluids at a pressure of up to 2650 bar).
Re Clm 14: Graffy discloses a method for the production of a connection between the pipe and the pipe fitting according to at least one of claim 1 (see the rejection of claim 1 above), the method comprising the following steps:
pushing the counter bearing and the cutting ring onto the pipe end section of the pipe (see Figs 1-5 and 7 and the Fig. above, as this is how to install such structures), inserting the pipe end section and the cutting ring into the socket (see Figs 1-5 and 7 and the Fig. above, as this is how to install such structures), and
applying a force to the cutting ring (see Figs 1-5 and 7 and the Fig. above, via 30) that acts essentially along the longitudinal centerlines through the counter bearing in order to press the cutting ring into the socket (see Figs 1-5 and 7 and the Fig. above, while tightening 30).
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.
Claim(s) 5, 6, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graffy (US 3545793) as applied to claims 1-3, 7, and 9-14 above.
Re Clm 5: Graffy discloses the angle between the first external cone and the longitudinal centerline of the cutting ring, and the angle between the second external cone and the longitudinal centerline of the cutting ring.
Graffy fails to disclose that the disclosed angle between the disclosed first external cone and the disclosed longitudinal centerline of the disclosed cutting ring is between 10 degrees and 24 degrees and that the disclosed angle between the disclosed second external cone and the disclosed longitudinal centerline of the disclosed cutting ring is between 24 degrees and 35 degrees.
In this instance, specific desired angles enhance the assembling of the joint and the securing of the joint, such as for piloting members together aid in properly mating members together, insuring that sufficient force is applied is the securing or mating members to prevent unwanted separation, or alternately, such angled structures would yield the same predictable result(s) of forming a leak free joint.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to have modified the device of Graffy, to have had the disclosed angle between the disclosed first external cone and the disclosed longitudinal centerline of the disclosed cutting ring is between 10 degrees and 24 degrees and that the disclosed angle between the disclosed second external cone and the disclosed longitudinal centerline of the disclosed cutting ring is between 24 degrees and 35 degrees, with a reasonable expectation of success because an angled structure(s) is being replaced with another angled structure(s), for the purpose of piloting members together aid in properly mating members together, insuring that sufficient force is applied is the securing or mating members to prevent unwanted separation, or alternately, such angled structures would yield the same predictable result(s) of forming a leak free joint.
Note that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re Clm 6: Graffy discloses the angle between the first internal cone and the longitudinal centerline of the socket, and the angle between the second internal cone and the longitudinal centerline of the socket.
Graffy fails to disclose that the disclosed angle between the disclosed first internal cone and the disclosed longitudinal centerline of the disclosed socket is between 17 degrees and 31 degrees, and that the disclosed angle between the disclosed second internal cone and the disclosed longitudinal centerline of the disclosed socket is between 31 degrees and 43 degrees.
In this instance, specific desired angles enhance the assembling of the joint and the securing of the joint, such as for piloting members together aid in properly mating members together, insuring that sufficient force is applied is the securing or mating members to prevent unwanted separation, or alternately, such angled structures would yield the same predictable result(s) of forming a leak free joint.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to have modified the device of Graffy, to have had the disclosed angle between the disclosed first internal cone and the disclosed longitudinal centerline of the disclosed socket is between 17 degrees and 31 degrees, and that the disclosed angle between the disclosed second internal cone and the disclosed longitudinal centerline of the disclosed socket is between 31 degrees and 43 degrees, with a reasonable expectation of success because an angled structure(s) is being replaced with another angled structure(s), for the purpose of piloting members together aid in properly mating members together, insuring that sufficient force is applied is the securing or mating members to prevent unwanted separation, or alternately, such angled structures would yield the same predictable result(s) of forming a leak free joint.
Note that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re Clm 8: Graffy discloses the contact surfaces of the cutting ring and of the counter bearing have an inclination to the longitudinal centerlines.
Graffy fails to disclose that the disclosed contact surfaces of the disclosed cutting ring and of the disclosed counter bearing have a disclosed inclination to the disclosed longitudinal centerlines between 81 degrees and 89 degrees.
In this instance, specific desired angles enhance the assembling of the joint and the securing of the joint, such as for piloting members together aid in properly mating members together, insuring that sufficient force is applied is the securing or mating members to prevent unwanted separation, or alternately, such angled structures would yield the same predictable result(s) of forming a leak free joint.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to have modified the device of Graffy, to have had the disclosed contact surfaces of the disclosed cutting ring and of the disclosed counter bearing have a disclosed inclination to the disclosed longitudinal centerlines between 81 degrees and 89 degrees, with a reasonable expectation of success because an angled structure(s) is being replaced with another angled structure(s), for the purpose of piloting members together aid in properly mating members together, insuring that sufficient force is applied is the securing or mating members to prevent unwanted separation, or alternately, such angled structures would yield the same predictable result(s) of forming a leak free joint.
Note that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Allowable Subject Matter
Claim 16 allowed.
Claims 4 and 15 is 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.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
The prior art does not provide any teaching, suggestion or motivation (TSM) to modify the prior art as such.
There is no cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the applicant’s invention.
Even though, the individual parts are known per se, there is nothing to teach the specific structures and structural combinations as claimed.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
Addressing applicant’s remarks, on page 8 in the last two lines through page 17 (the entire page), Graffy’s element 11 can be used to move the 33 into 30, as these elements can move independently, see Fig. 3 where there is nothing restraining them.
The inner surface of the socket includes the first internal cone at 1002 the second internal cone at 2002, and the first internal cone has the smaller angle with respect to the longitudinal centerline of the socket than the second internal cone (this can be seen in the Fig. above).
The cones are made to or capable of having the first cutting edge and then the second cutting edge cuts into a surface of a pipe end section; because the functionality would depend upon the pipe being used and note that the claim is directed towards a pipe fitting and not the combination of the pipe fitting and the pipe as the pipe itself is not a positively recited element of the claim.
Claims 15 and 16 have been indicated as containing allowable subject matter and any remarks directed towards these claims are moot due to the fact that these claims have been indicated as containing allowable subject matter.
All other claims not specifically argued will stand or fall with the claim from which they depend.
The claims previously rejected have remained rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES A LINFORD whose telephone number is (571)270-3066. The examiner can normally be reached Monday thru Friday: 8:00 am to 5:00 pm Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at (571) 270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAMES ALBERT LINFORD
Examiner
Art Unit 3679
03/30/2026
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679
Prosecution Insights