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
Claims 3-4 are objected to because of the following informalities:
Claim 3, line 2, it seems that “until” should be --to--.
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.
Claim 7 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation a composite material, and the claim also recites metal foil laminated to a fibre fabric, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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) 1-2, 5-6, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bao (CN 2101812 U).
As to claim 1, Bao discloses a joint assembly adapted for flexibly connecting first and second duct ends, comprising an expansion joint layer (1/2/3), a fastening assembly (5 at each end of the assembly shown in Fig. 1) adapted for attachment at the first duct end and at the second duct end, and a metal foil (4; see paragraph [0008] of attached translation, wherein “iron” is identified with numeral “4”), wherein the fastening assembly at the first duct end fixes a first end of the expansion joint layer between a first face and a second face, wherein the fastening assembly at the second duct end fixes a second end of the expansion joint layer between a first face and a second face (as shown in Fig. 1, the fastener 5 extends from one face to another face), and wherein the metal foil (4) encloses at least one end of the expansion joint layer between the first face and the second face (Fig. 1), so that the metal foil overlays the expansion joint layer radially inwards, radially outwards and at the axial end (Fig. 1).
As to claim 2, Bao discloses an Expansion joint assembly according to claim 1, wherein the expansion joint layer comprises multiple layers, including an outside layer, an insulation layer and an inner layer. Refer to paragraphs [0008] and [0009] of the translation.
As to claim 5, Bao discloses an Expansion joint assembly according to claim 1, wherein the first face and the second face of the fastening assembly are adapted to be tighten using screws (as by the fastener holes 5)
As to claim 6, Bao discloses an Expansion joint assembly according to claim 1, wherein the first face and the second face of the fastening assembly are adapted to be tighten using clamps. Clamps can be used with the fastener holes (5).
As to claim 14, Bao discloses an Expansion joint assembly according to claim 1, wherein the expansion joint assembly is adapted for operation temperatures up to 550 °C. Refer to paragraph [0005] of the translation.
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.
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) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bao in view of Van Tine et al (US 3,460,856).
As to claim 3, Bao discloses an Expansion joint assembly according to claim 2, except that the insulation layer does not extend until the first end and the second end of the expansion joint layer.
However, Van Tine et al teaches a similar expansion joint comprising a sleeve that is fastened at each end to a conduit by a fastening assembly. The sleeve includes a plurality of layers, including insulating layers (33, 34). As shown in Figs. 1 and 2, the layers do not extend into the fastening assembly. As explained in col. 3, ll. 30-33, whre considerable flexing of the sleeve is anticipated, cushioning material (48, 50) is also provided to deter cutting of the cover sleeve (44) by a flange (46) or clamp bar (52).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bao such that the insulation layer does not extend until the first end and the second end of the expansion joint layer, as taught by Van Tine et al, with a reasonable expectation of success, in order to protect the insulation layer during considerable flexing of the joint assembly.
As to claim 4, Bao/Van Tine et al discloses an Expansion joint assembly according to claim 3, wherein a fibre material (48, 50) is placed between the first face and the second face of the fastening assembly and connected to the insulation layer.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bao in view of Broyles (US 5,358,284).
As to claim 8, Bao discloses an Expansion joint assembly according to claim 1, except that the expansion joint assembly comprises a seal between the first face of the fastening assembly and the metal foil and/or a seal between the second face of the fastening assembly and the metal foil, and
As to claim 9, Bao discloses an Expansion joint assembly according to claim 8, except that the seal is a tape seal.
However, Broyles teaches a similar expansion joint assembly wherein gasket strips (40, 42) are used to seal between the first and second faces of the fastening assembly.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bao such that the expansion joint assembly comprises a seal between the first face of the fastening assembly and the metal foil and/or a seal between the second face of the fastening assembly and the metal foil, and, the seal is a tape seal (strip seal), as taught by Broyles, with a reasonable expectation of success, in order to properly seal the joints at the fastening assembly.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bao in view of McNeela et al (GB 2299636 A).
As to claim 10, Bao discloses an Expansion joint assembly according to claim 1, except that an end of the metal foil extends from the fastening assembly axially (X - X) inwards, away from the fastening assembly.
However, McNeela et al teaches a similar expansion joint assembly having a cuff (20) that extends from the fastening assembly axially inwards, away from the fastening assembly, as shown in Fig. 1.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bao such that the end of the metal foil extends from the fastening assembly axially (X - X) inwards, away from the fastening assembly, as taught by McNeela et al, with a reasaonble expectation of success, in order to better protect the insulation layer.
Claim(s) 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bao.
As to claim 11, Bao discloses an Expansion joint assembly according to claim 1, except for expressly teaching that the metal foil has a thickness between 0,025 mm and 0,05 mm.
However, it is known in the art that altering/varying the relative sizes of a structure can affect the weight, sealing ability, strength, flexibility, etc. of the structure.
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Bao such that the metal foil has a thickness between 0,025 mm and 0,05 mm, for the purpose of one or more of: controlling the weight of the structure; ensuring sufficient strength and/or flexibility; providing a structure which would have allowed sufficient sealing and engagement to occur when the joint is properly mated; to aid in the machining of the structure; and to have a structural arrangement which would have been obvious to try, since 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.
Alternatively, it would have been obvious matter of design choice to modify Bao such that the metal foil has a thickness between 0,025 mm and 0,05 mm, for the purpose of one or more of: controlling the weight of the structure; ensuring sufficient strength and/or flexibility; providing a structure which would have allowed sufficient sealing and engagement to occur when the joint is properly mated; to aid in the machining of the structure; and to have a structural arrangement which would have been obvious to try, since such a modification would have involved a mere change in the size and/or proportion of a component. A change is size and/or proportion is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955) and/or Gardener v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
As to claim 13, Bao discloses an Expansion joint assembly according to claim 1, except for expressly teaching that a mean roughness value RA of the metal foil is below 0,1 μm.
However, it is known in the art that altering/varying the relative sizes of a structure can affect the weight, sealing ability, strength, flexibility, etc. of the structure.
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Bao such that a mean roughness value RA of the metal foil is below 0,1 μm, for the purpose of one or more of: controlling the weight of the structure; ensuring sufficient strength and/or flexibility; providing a structure which would have allowed sufficient sealing and engagement to occur when the joint is properly mated; to aid in the machining of the structure; and to have a structural arrangement which would have been obvious to try, since 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.
Alternatively, it would have been obvious matter of design choice to modify Bao such that a mean roughness value RA of the metal foil is below 0,1 μm, for the purpose of one or more of: controlling the weight of the structure; ensuring sufficient strength and/or flexibility; providing a structure which would have allowed sufficient sealing and engagement to occur when the joint is properly mated; to aid in the machining of the structure; and to have a structural arrangement which would have been obvious to try, since such a modification would have involved a mere change in the size and/or proportion of a component. A change is size and/or proportion is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237, (CCPA 1955) and/or Gardener v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim(s) 7 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bao in view of DE 9402263 U1.
As to claim 7, Bao discloses an Expansion joint assembly according to claim 1, wherein the metal foil is a composite material, especially a metal foil laminated to a fibre fabric.
However, DE 9402263 teaches a similar expansion joint assembly, wherein the sealing member includes cuffs (30) that are fabric with stainless steel threads (see col. 3, ll. 17-19 and col. 5, ll. 16-20).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bao such that the metal foil is a composite material, especially a metal foil laminated to a fibre fabric, as taught by DE 9402263, with a reasonable expectation of success, in order to create a more durable metal foil cuff.
As to claim 12, Bao discloses an Expansion joint assembly according to claim 1, except that the metal foil is made of stainless steel.
However, DE 9402263 teaches a similar expansion joint assembly, wherein the metal foils of stainless steel are particularly advantageous at higher temperatures (higher than 300-400°).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bao such that the metal foil is made of stainless steel, as taught by DE 9402263, with a reasonable expectation of success, in order to allow the foil to perform optimally at higher temperatures.
Examiner’s Note:
The italicized portions in the foregoing claims are functional recitations. These clauses, as well as other statements of intended use do not serve to patently distinguish the claimed structure over that of the reference(s), as long as the structure of the cited reference(s) is capable of performing the intended use. See MPEP 2111-2115.
See also MPEP 2114, which states:
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 USPQ 2d 1647;
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531; and
[A]pparatus claims cover what a device is, not what a device does." Hewlett- Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525,1528.
Any one of the systems in the cited reference(s) is capable of being used in the same manner and for the intended or desired use as the claimed invention. Note that it is sufficient to show that said capability exists, which is the case for the cited reference(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Merkwacz teaches a similar expansion joint assembly.
Hagar ‘365 and Hagar ‘460 teach expansion joint assemblies comprising fabric/foil composites.
Dethier a similar expansion joint assembly having a multiplicity of layers (Fig. 4), and a specific fastening joint assembly, as shown in Fig. 3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James M Hewitt II whose telephone number is (571)272-7084. The examiner can normally be reached M-F 730am-930pm (MST), mid-day flex.
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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.
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James M. Hewitt II
Primary Examiner
Art Unit 3679
/JAMES M HEWITT II/Primary Examiner, Art Unit 3679
Prosecution Insights