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 .
Claim Objections
Claim 1 is objected to because of the following informalities: Line 10 – replace “with use of” with --utilizing--.
Correction is required.
Claim 2 is objected to because of the following informalities:
Line 1 – add --the-- between “by” and “one”.
Line 5 - replace “with the use of” with --utilizing--.
Correction is required.
Claim 3 is objected to because of the following informalities:
Line 1 - add --the-- between “wherein” and “one or more”.
Line 3 - add --the-- between “of” and “industry”.
Correction is required.
Claim 4 is objected to because of the following informalities:
Line 2 - add --the-- between “receives” and “industry”.
Line 2 – replace “bolt” with --one or more fastening bolts--.
Correction is required.
Claim 6 is objected to because of the following informalities:
Line 2 - replace “a” before “head” with --the--.
Line 2 – replace “fastening bolt” with --one or more fastening bolts--.
Correction is required.
Claim 8 is objected to because of the following informalities: Line 1 – replace “fastening bolt is” with --one or more fastening bolts are--.
Correction is required.
Claim 9 is objected to because of the following informalities: Line 1 – replace “fastening bolt provides” with --one or more fastening bolts provide--.
Correction is required.
Claim 11 is objected to because of the following informalities:
Line 1 – replace “fastening bolt is” with --one or more fastening bolts are--.
Line 3 – replace “fastening bolt is” with --one or more fastening bolts are--.
Correction is required.
Claim 13 is objected to because of the following informalities: Line 1 - add --the-- between “wherein” and “standard”.
Correction is required.
Claim 14 is objected to because of the following informalities: Claim 14 needs to be re-written according to 37 CFR 1.75(i) - where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation.
Correction is required.
Claim 14 is objected to because of the following informalities: Line 6 – replace “with the use of” with --utilizing--.
Correction is required.
Claim 15 is objected to because of the following informalities:
Line 2 - add --the-- between “receives” and “industry”.
Line 2 – replace “bolt” with --one or more fastening bolts--.
Correction is required.
Claim 16 is objected to because of the following informalities:
Line 2 - replace “a” before “head” with --the--.
Line 2 – replace “fastening bolt” with --one or more fastening bolts--.
Correction is required.
Claim 18 is objected to because of the following informalities: Line 1 - add --the-- between “wherein” and “standard”.
Correction is required.
Claim 19 is objected to because of the following informalities:
Line 5 - add --and-- after “flanges;”.
Line 7 - replace “using” with --utilizing--.
Correction is required.
Claim 20 is objected to because of the following informalities: Line 2 – replace “using” with --utilizing--.
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.
Claims 3-12 and 14-18 are rejected under 35 U.S.C. 112(b) 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 3 recites “each of the one or more fastening bolts having a distinctive hexagonal head with an adjusted head height…” It is not clear how “distinctive” is being defined and what makes the hexagonal head “distinctive”. It is also unclear how to determine the metes and bounds of “distinctive”. Further, it is unclear how the hexagonal head has an “adjusted head height”. How is the head height adjusted and what is the adjustment being compared to or defined by? As it is not clear what is being claimed, and as best understood, Examiner’s understanding is that as long as the fastening bolt has a hexagonal head, then these limitations have been met.
Claim 7 recites “wherein actuating the bolt head results in a reduction in heat generation at a nut/bolt interface”. It is unclear what the metes and bounds of “a reduction in heat generation” would cover. How much would determine the amount of reduction for “a reduction in heat generation”? What is the basis against which “a reduction in heat generation” is being compared to? Also, is Applicant now reciting a nut/bolt interface? Claims 1, 3 and 6 from which claim 7 depends do not recite a nut or a nut/bolt interface. It is also not clear where the interface would be located on the pipe fitting. As it is not clear what Applicant is claiming, and as best understood, Examiner’s understanding is that as long as the bolt head can be configured to be actuated, then this claim limitation has been met.
Claims 4-6 and 8-12 are rejected herein due to their dependency on claim 3.
Claim 14 recites “the fastener comprising one or more fastening bolts having a distinctive hexagonal head with an adjusted head height…” It is not clear how “distinctive” is being defined and what makes the hexagonal head “distinctive”. It is also unclear how to determine the metes and bounds of “distinctive”. Further, it is unclear how the hexagonal head has an “adjusted head height”. How is the head height adjusted and what is the adjustment being compared to or defined by? As it is not clear what is being claimed, and as best understood, Examiner’s understanding is that as long as the fastening bolt has a hexagonal head, then these limitations have been met.
Claim 17 recites “wherein actuating the bolt head results in a reduction in heat generation at a nut/bolt interface”. It is unclear what the metes and bounds of “a reduction in heat generation” would cover. How much would determine the amount of reduction for “a reduction in heat generation”? What is the basis against which “a reduction in heat generation” is being compared to? Also, is Applicant now reciting a nut/bolt interface? Claims 14 and 16 from which claim 7 depends do not recite a nut or a nut/bolt interface. It is also not clear where the interface would be located on the pipe fitting. As it is not clear what Applicant is claiming, and as best understood, Examiner’s understanding is that as long as the bolt head can be configured to be actuated, then this claim limitation has been met.
Claims 15, 16 and 18 are rejected herein due to their dependency on claim 14.
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 (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 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) 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Butler et al U.S. Patent No. 4,271,870.
As best understood by Examiner, and as shown in Figure 6, with regard to claim 14, Butler et al disclose a fastener for use with a pipe fitting, the fastener comprising one or more fastening bolts (at 30) having a distinctive hexagonal head (at 36) with an adjusted head height, the one or more fastening bolts coupling one or more flanges of the pipe fitting and extending generally tangential to a generally cylindrical body portion of a sleeve of the pipe fitting and through the one or more flanges that, when tightened, create a radially applied clamping force to tightened engagement with the use of industry standard equipment (where the fastening bolt of the fastener of Butler et al can be configured to be used in a pipe fitting and fastened utilizing industry standard equipment).
Note: the pipe fitting and the industry standard equipment are not a part of the claimed invention.
As best understood by Examiner, with regard to claim 15, Butler et al disclose wherein the distinctive hexagonal head (at 36) further comprises a recessed portion (at 37) that receives industry standard equipment to tighten the bolt (where the recessed portion is capable of being configured to receive industry standard equipment.
Note: the industry standard equipment is not a part of the claimed invention.
As best understood by Examiner, with regard to claim 16, Butler et al disclose wherein the one or more fastening bolts (at 30) are actuated from a head (at 36) of the fastening bolt (where the hexagonal head of the fastening bolt 30 can be actuated via a wrench).
As best understood by Examiner, with regard to claim 17, Butler et al disclose wherein actuating the bolt head results in a reduction in heat generation at a nut/bolt interface (per Examiner’s understanding as the bolt head of the fastening bolt 30 can be actuated via a wrench, this limitation has been met).
As best understood by Examiner, with regard to claim 18, Butler et al disclose wherein the fastener is capable of being configured to be utilized with standard industry equipment comprising industry-standard ratchets, torque wrenches and/or electric/pneumatic impact drivers.
Note: the industry standard equipment is not a part of the claimed invention.
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) 1, 2, 13, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bird U.S. Patent Application Publication No. 2012/0205909A1 in view of Krausz et al U.S. Patent Application Publication No. 2012/0145270A1.
With regard to claim 1, and as shown in Figure 3, Bird discloses a pipe fitting comprising:
a sleeve (at 12) having a generally cylindrical body portion with at least one open end (open end at 22) configured to receive at least one pipe (as shown in Fig 2);
a sealing gasket (at 18) operatively coupled with the sleeve for engaging at least one pipe end of the at least one pipe (as shown in Fig 6);
a clamping element (at 14) operatively coupled with the sleeve for compressing the sealing gasket into tightened engagement with the at least one of the pipe end (as shown in Fig 6), the clamping element including one or more flanges (at 26a, 26b); and
one or more fastening elements (at 48) that engages the one or more flanges to tighten the pipe fitting from an uncompressed position to a sealed engagement position (as shown in Fig 1).
However, Bird does not expressly disclose the use of industry standard equipment to engage the one or more fastening elements with the one or more flanges. Krausz et al teach that industry standard equipment such as a torque wrench can be utilized to tighten a fastening element such as a bolt to provide a more secure attachment between elements (paragraph 3, lines 2-5 and paragraph 4, lines 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize industry standard equipment such as a torque wrench to engage one or more fastening elements with one or more flanges with a reasonable expectation of success to provide a more secure attachment between elements and because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice.
With regard to claim 2, and as shown in Figure 3, Bird in view of Krausz et al disclose wherein the one or more flanges (at 26a, 26b) are coupled by one or more fastening elements (at 48), wherein the one or more fastening elements (at 48) extend generally tangential to the generally cylindrical body portion of the sleeve and through the one or more flanges (as shown in Fig 1) that, when tightened, creates radially applied clamping force to tightened engagement with the use of industry standard equipment.
With regard to claim 13, Bird in view of Krausz et al disclose wherein standard industry equipment comprises torque wrenches (paragraph 4, lines 1-3).
With regard to claim 19, and as shown in Figure 3, Bird discloses a method of fastening a pipe fitting having a sleeve (at 12), a sealing gasket (at 18) operatively coupled with the sleeve for engaging at least one pipe end of at least one pipe (as shown in Fig 6), a clamping element (at 14) operatively coupled with the sleeve for compressing the sealing gasket into tightened engagement with the at least one of the pipe end (as shown in Fig 6), the clamping element including one or more flanges (at 26a, 26b); one or more fastening elements (at 48), the method comprising:
activating the one or more fastening elements that engages the one or more flanges to tighten the pipe fitting from an uncompressed position to a sealed engagement position (tightening the fastening element 48 from an uncompressed position to a sealed engagement position as shown in Fig 1).
However, Bird does not expressly disclose the use of industry standard equipment to engage the one or more fastening elements with the one or more flanges. Krausz et al teach that industry standard equipment such as a torque wrench can be utilized to tighten a fastening element such as a bolt to provide a more secure attachment between elements (paragraph 3, lines 2-5 and paragraph 4, lines 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize industry standard equipment such as a torque wrench to engage one or more fastening elements with one or more flanges with a reasonable expectation of success to provide a more secure attachment between elements and because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice.
With regard to claim 20, Bird in view of Krausz et al disclose further comprising activating the one or more fastening elements using torque wrenches (paragraph 4, lines 1-3).
Claim(s) 3, 4 and 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bird in view of Krausz et al and further in view of Butler et al.
As best understood by Examiner, with regard to claim 3, Bird in view of Krausz et al disclose wherein one or more fastening elements is one or more fastening bolts (at 48), but do not disclose each of the one or more fastening bolts having a distinctive hexagonal head with an adjusted head height that enables engagement of industry standard equipment. Butler et al teach that a fastening bolt (at 30) can have a hexagonal head (at 36, column 4, lines 50-52 and Fig 6) which would be engageable with a wrench for fastening.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to the fastening bolt have a hexagonal head with a reasonable expectation of success to be engageable with a wrench for fastening, because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice and, as both fastening bolts of Bird and Krausz et al are used with pipe fittings, it would have been obvious to substitute the fastening bolt of Bird with the fastening bolt of Krausz et al to achieve the predictable result of tightening flanges together on the pipe fitting.
As best understood by Examiner, with regard to claim 4, Bird in view of Krausz et al and further in view of Butler et al disclose wherein the distinctive hexagonal head further comprises a recessed portion (at 37) that receives industry standard equipment to tighten the bolt.
As best understood by Examiner, with regard to claim 6, Bird in view of Krausz et al and further in view of Butler et al disclose wherein the one or more fastening elements are actuated from a head of the fastening bolt (where the hexagonal head of the fastening bolt 30 can be actuated via a wrench).
As best understood by Examiner, with regard to claim 7, Bird in view of Krausz et al and further in view of Butler et al disclose wherein actuating the bolt head results in a reduction in heat generation at a nut/bolt interface (per Examiner’s understanding as the bolt head of the fastening bolt 30 can be actuated via a wrench, this limitation has been met).
As best understood by Examiner, with regard to claim 8, Bird in view of Krausz et al and further in view of Butler et al disclose wherein the fastening bolt is actuated by a standard socket (where a wrench can be utilized - paragraph 4, lines 1-3).
Claim(s) 5 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bird in view of Krausz et al and Butler et al U.S. Patent No. 4,271,870 and still further in view of Chiproot U.S. Patent Application Publication No. 2012/0299293A1.
As best understood by Examiner, with regard to claim 5, Bird in view of Krausz et al and Butler et al disclose wherein the one or more flanges comprise first and second flanges (at 26a, 26b) and wherein the one or more fastening bolts (at 48/30) couple the first and second flanges at a first end but do not disclose that the clamping element further comprises a set of two or more small fasteners, and the set of two or more small fasteners couple the first and second flanges at a second end, opposite the first end. Chiproot teaches that the second end of a pipe fitting can have two small fasteners opposite a first end with a fastening bolt to aid in tightening the pipe fitting (paragraph 20, lines 4-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the second end comprise a set of two or more small fasteners to couple the first and second flanges with a reasonable expectation of success to aid in tightening the pipe fitting as taught by Chiproot and because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice.
As best understood by Examiner, with regard to claim 9, Bird in view of Krausz et al, Butler et al and Chiproot disclose wherein tightening the fastening bolt (at 48/30) provides a force required to create a seal between the sealing gasket and the at least one pipe end (as shown in Fig 6 of Bird) and engage a grip ring (while the grip ring has not been positively recited, Chiproot shows at 44 where a grip ring can be added to a pipe fitting) by bending the first and second flanges inward.
As best understood by Examiner, with regard to claim 10, Bird in view of Krausz et al, Butler et al and Chiproot disclose wherein when fully tightened, a gap is present between ends of the first and second flanges (as shown in Fig 1 of Bird).
As best understood by Examiner, with regard to claim 11, Bird in view of Krausz et al, Butler et al and Chiproot disclose wherein the fastening bolt (at 48 of Bird) is paired with a washer and nut (at 58, 50 of Bird) that are mated by shape to flange pockets (at 52a, 52b of Bird) allowing the first and second flanges to articulate as the fastening bolt is tightened.
As best understood by Examiner, with regard to claim 12, Bird in view of Krausz et al, Butler et al and Chiproot disclose the claimed invention but do not expressly disclose that the washer is a swivel washer and the nut is a swivel nut.
The Examiner takes Official Notice wherein it is old and well known in the art to have the washer be a swivel washer and the nut be a swivel nut based on the type of pipe fitting required and based also on whether the washer and nut need to provide resistance to torque.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the washer be a swivel washer and the nut be a swivel nut with a reasonable expectation of success based on the type of pipe fitting required, based on whether the washer and nut need to provide resistance to torque and because it has been held to be within the general skill of a worker in the art to select a known element for use on the basis of its suitability for the intended use as a matter of obvious design choice.
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 16 and 18 of U.S. Patent No. 12,449,070. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader recitation of a pipe fitting with a sleeve, a sealing gasket, a clamping element including one or more flanges and one or more fastening elements as presently claimed in the current application along with the independently and dependently claimed limitations of claims 1 and2 are merely a broadened form of the limitations as disclosed in claims 1, 2, 16 and 18 of patent ‘070.
Conclusion
The prior art made of record and not relied upon are examples of pipe fittings with a sleeve, a sealing gasket, a clamping element and one or more fastening elements or examples of bolts with a recess portion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FANNIE KEE whose telephone number is (571)272-1820. The examiner can normally be reached 8am-5pm.
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.
/F.K./Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679