DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,119,645 in view of Nowak (5,580,188). With regard to claim 1, U.S. Patent No. 10,119,645 claims similar limitations with the exception of wherein the expander being rotatable relative to the pipe anchor. Nowak discloses a pipe replacement (fig. 2) assembly wherein an expander (45) is rotatable (via 48) relative to a pipe anchor (31). It would have been obvious to one of ordinary skill in the art before the invention was made to modify U.S. Patent No. 10,119,645 and have the expander be rotatably connected to the pipe anchor in order to prevent unwanted rotation of the replacement pipe.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,209,111 in view of Nowak (5,580,188). With regard to claim 1, U.S. Patent No. 11,209,111 claims similar limitations with the exception of wherein the expander being rotatable relative to the pipe anchor. Nowak discloses a pipe replacement (fig. 2) assembly wherein an expander (45) is rotatable (via 48) relative to a pipe anchor (31). It would have been obvious to one of ordinary skill in the art before the invention was made to modify U.S. Patent No. 11,209,111 and have the expander be rotatably connected to the pipe anchor in order to prevent unwanted rotation of the replacement pipe.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,578,830. 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. 11,578,830 and are thus encompassed by said claims.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,247,688 in view of Nowak (5,580,188). With regard to claim 1, U.S. Patent No. 12,247,688 claims similar limitations with the exception of wherein the expander being rotatable relative to the pipe anchor. Nowak discloses a pipe replacement (fig. 2) assembly wherein an expander (45) is rotatable (via 48) relative to a pipe anchor (31). It would have been obvious to one of ordinary skill in the art before the invention was made to modify U.S. Patent No. 12,247,688 and have the expander be rotatably connected to the pipe anchor in order to prevent unwanted rotation of the replacement pipe.
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.
Claim 1 is 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 1 recites the limitation "the replacement pipe coupling" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the pipe anchor" in line 9. There is insufficient antecedent basis for this limitation in the claim.
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tjader (2007/0048091) in view of Nowak (5,580,188).
With regard to claim 1, Tjader discloses a pipe breaking assembly (abstract), comprising: an expander (108) having a front opening (fig. 2, 4a, 4b) for a pulling cable (106); a cutter (102) rotatably coupled in front of the expander (para 0022, figs 1-2); a cable gripping anchor (200) including a number of tapered anchor jaws (500; fig. 5) located in the expander (para 0038); a replacement pipe anchor (116/122) located at a back end of the expander (fig. 2), the replacement pipe coupling adapted to hold a trailing replacement pipe (121); and an expander coupling (204) attaching the replacement pipe anchor to the expander (fig. 2).
Tjader is silent regarding the expander is rotatable relative to the pipe anchor.
Nowak discloses a pipe replacement (fig. 2) assembly wherein an expander (45) is rotatable (via 48) relative to a pipe anchor (31). It would have been obvious to one of ordinary skill in the art before the invention was made to modify Tjader and have the replacement pipe anchor rotatable to the expander as taught by Nowak in order to prevent unwanted rotation of the replacement pipe.
Conclusion
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
06/04/2026
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